^opymfcjHTs 

AND TRADE MARKS 
E. R. NEWELL 





Class _T_M£ 

Book. vK^ -1— 



Copyright N° 



COPYRIGHT DEPOSIT 



PATENTS 



COPYRIGHTS AND TRADE MARKS 



BY 




EMERSON R. NEWELL 




OF THE NEW YORK BAR 




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• • • • -, 




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1900 



Wrtz 

luibr^ury of Congress 

%t Copttb Rtttwco 
! OCT 9 1900 

SECOND COPY. 

! OHi>tR DWtSKWt, 
[APR, 22 1301 



COPYRIGHT 1900, 

BY 

EMERSON R. NEWELL 



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PRESS OF COOKE & FRY 
PRIVATELY PRINTED BOOKS 
70 Fifth Ave., New York. 



INDEX. 

A1 ' PAGE. 

Abandonment 24,33,48 

Allowance and Issue 3g 

Appeals ' 37 

Application and Applicant '5 27 

Art Z'ZZZZ ' 10 

" State of the, definition of. 47 

Assignment ..........41-43 

Canada, Patents in Zi #> 57 

Caveat 95 

barges "."\""\\3.ZV.V."Z 66 

Claims 99 qq 

Composition of Matter ^^\\\".' .'.".' .'.'.'.'.'.' 12' 32 

Conception of Invention "*"". q 35 

Copyrights ZZZZZZ. ' 51 

Cuba, Patents, etc., in 63-64 

Designs, Patents on ZZZZZZ. 50 

Disclaimer """ ±Ci 

Double Use ZZ. £5 

£ ra ™ n g ••••••-; ■ ZZZZZZ 31 

Jbmployer and Emplovee 9 42 

Equivalents , ZZZlE^-45 

Experiment Book 7 

Foreign Patents -ZZZZZZZZZZZZZZ'ZZ. 66 

Limitation by 21 

Forfeiture of Application 38 

France, Patents in "" 69 

Germany, Patents in 69 

Grant, What Constitutes a 41 

Great Britain, Patents in .'.'..! 71 

Guarantees of Validity or Non-infringement. ....... 38 

Improvements 13 

Infringement ZZZZZZZZZZ. '.'. 43 

Contributory 44 

_ . " Suits for aq 

Injunctions iV_zL« 

Interferences ' o* 

Interfering Patent Suits ZZZZZZZZZZ. ^8 

i 



PAGE. 

Invention, What Constitutes 6 

11 Joint 9 

Inventions, Joinder of 30 

Issue of Patent.. 38 

Labels, registration of. 62 

Licenses 42 

Lost Art 18 

Machine 12 

Marking Patented Articles 49 

Mechanical Skill 9, 14 

Method 10 

Model 32 

Novelty 14 

Oath 31 

Patent, Prior 19 

Patenting of Inventions 25 

Philippines and Porto Rico 63 

Practical Suggestions 64 

Principle Unpatentable 13 

Prior Knowledge and Use 17 

Prints, Registration of. 62 

Procedure in Patent Office 32 

Process 10 

Publication, Prior 22 

Purpose of Patent Laws 4 

Repair of M achine 44 

Reduction to Practice 6-8, 35 

Reissue 39 

Search, Infringement 45 

11 Preliminary 27 

Title 43 

11 Validity 46-47 

State of the Art, What Constitutes 47 

Suits, Patent 46 

Trade-marks..... 57 

Transfers of Interest in Patents 41 

Use, Experimental 23 

11 Prior and Public 17, 23 

Utility 13 

What may be Patented 10 

Who may obtain a Patent 5 



« \ 



INTRODUCTION. 

This little book was written particularly for inventors, 
manufacturers and authors, for the purpose of setting 
before them in a practical and non-technical manner the 
principles of the Law of Patents, Copyrights and Trade- 
marks. It does not attempt to state the entire body of 
the law, for the exceptions to and variations from the 
general rules laid down are so numerous and obscure that 
they cannot be given in a book of this size, nor is it in- 
tended to take the place of counsel, and the person who 
attempts to dispense with legal advice will, except as to the 
fundamental principles, probably err on some material point. 

The writer's experience as an Examiner in the United 
States Patent Office, and subsequently in practice before 
the United States Courts and the Patent Office, has made 
it evident to him that a great number of the mistakes 
made by inventors and manufacturers occur, not because 
they have not read the law, but because they do not 
clearly understand how it should be applied to their every- 
day experiences. Technical legal expressions do not con- 
vey a definite idea to the average person. Even if the 
inventor reads that " laches in reduction to practice will 
bar his right, as against a later conceiver, to carry his 
date of invention back to his original conception, " it does 
not usually give him much practical information, for in 
most cases he cannot be sure of just what acts constitute 
laches, or reduction to practice, or conception. If, how- 
ever, these points are explained with practical illustrations 
from the work-room, he has a more definite understanding 
of what is necessary to be done, and can avoid many of 
the legal pitfalls which are continually in his path. The 
writer has attempted, so far as possible in the limited 
space, to give a general statement of the law, with fre- 
quent practical examples such as are continually occurring 
in every machine-shop and factory, and he will feel repaid 
if by it his clients arrive at a more definite understanding 
of the law and can the more intelligently co-operate with 
him in obtaining full protection of their rights. 

18 Wall St.. New York. EMERSON R. NEWELL. 
October 1st, 1900. . 



PURPOSE OF THE PATENT LAWS. 

An inventor has no natural right to the exclusive con- 
trol of his invention. Such a control is given him, not 
because of any such right, but on the grounds of public 
policy. 

The Patent Laws of the United States are founded on 
Art. 1, § 8 of the Constitution, which says: "The Congress 
shall have power * * * to promote the progress of 
science and useful arts by securing for limited times to 
authors and inventors the exclusive right to their respec- 
tive writings and disco veries." In accordance with this 
delegation of power, Congress has enacted laws giving to 
authors and inventors the exclusive control of their 
writings and discoveries. This exclusive control is not 
given to them because an inventor has any moral right 
to prevent others from enjoying the fruits of his new 
ideas, but because it was recognized that, by giving him 
the exclusive control of his invention for a short period, 
the arts would be encouraged, the public would obtain the 
right to enjoy the invention after that period, and the 
prosperity of the country would be increased thereby. 
That these results have been accomplished is evident. 
Morse would probably not have struggled to produce the 
telegraph, nor Eli Whitney to produce the cotton gin, 
Goodyear would not have gone through years of abject 
poverty in order to accomplish the successful vulcanization 
of rubber, Edison would probably not have given to the 
world the incandescent electric light, nor Bell the tele- 
phone, without the hope of a reward, — and these are only 
a few of the many inventions which have been the result of 
years of experiment and which have made this country the 
manufacturing center of the world. 

This reward is not, however, given to the inventor 
for his mere production of the new thing. The Govern- 
ment enters into a contract with him, and gives him a 
patent in consideration of his disclosing the invention in 



mmm 



his patent "in such full, clear, concise, and exact terms as 
to enable any person skilled in the art or science to which 
it appertains or with which it is most nearly connected, to 
make, construct, compound and use the same," to the end 
that the public may be able, at the expiration of the 
"limited time," to reproduce and enjoy the invention. If 
the patent does not so disclose it, the patent is void. 

WHO MAY OBTAIN A PATENT. 

The basic statute of the Patent Laws is § 4886 R. S., 
which says: "Any person who has invented or discov- 
ered any new and useful art, machine, manufacture or 
composition of matter, or any new and useful improve- 
ments thereof, not known or used by others in this country 
before his invention or discovery thereof, and not patented 
or described in any printed publication in this or any 
foreign country, before his invention or discovery thereof, 
or more than two years prior to his application, and not 
in public use or on sale in this country for more than two 
years prior to his application, unless the same is proved to 
have been abandoned, may, upon payment of the fees re- 
quired by law, and other due proceeding had, obtain a 
patent therefor." 

This is the law as it now stands. The clause in italics 
was inserted by the Act of March 3, 1897, and does not 
apply to any application filed prior to Jan. 1, 1898, nor to 
any patent granted as a result of any such application. 
The effect of this change in the law is explained hereafter 
(p. 20). Certain other changes were made at the same 
time which merely served to explain more clearly the 
meaning of the statute. 

"Any person who has invented or discovered * * * 
may » * * obtain a patent." The protection of the 
patent law is not confined to citizens of the United States, 
but is also extended to foreigners. A minor may obtain 
a patent, or a married woman. The applicant must, how- 
ever, if alive, be the inventor or discoverer of the subject- 
matter sought to be patented, except in the case of a per- 
son who becomes insane after having made his invention. 
In the latter case his guardian, conservator, or legal repre- 
sentative may apply. If the inventor be dead his executor 



or administrator may apply for and obtain the patent. 
If the applicant for the patent is not the inventor, ex 
cept as specified above, the patent is void. Great care 
should therefore be exercised that the person who is the 
actual inventor, and only such person, should be the 
applicant. 

Invention and Discovery. — These words have practically 
the same meaning in the Patent Law, and are used indis- 
criminately. 

The invention is not "made," i.e., complete, when 
merely the idea has occurred to the inventor, no matter 
how complete in its details the invention may appear to 
his mind. There has been nothing produced as yet which 
would benefit the world. Nor is the invention complete 
even though the inventor tells someone else about it and 
describes the invention fully to him, nor if he has even gone 
so far as to make a drawing of the subject-matter of his 
idea. It has not been proved that the invention is opera- 
tive. It may be an absolute failure. When, however, the 
inventor " reduces the invention to practice,' ' for instance, 
in the case of a machine, by constructing and successfully 
operating a full-sized machine, or, in the case of a process, 
by successfully performing the process, the inventive act is 
complete. A model is not, in most cases, a reduction to 
practice. Filing an allowable application has been held 
to be a constructive reduction to practice. 

When the inventor has thought out all the essential 
parts of his invention, so that nothing remains to be done 
except to embody it by mere mechanical skill in a complete 
device, he has "conceived " the invention. It must be a 
definite and permanent conception of the complete and 
operative invention. A mere hazy idea is not enough. 
When James Watt saw the lid of the kettle lifted up by the 
steam within it, and the idea occurred to him that steam 
could be utilized to move a machine, he had not, in the eye 
of the law, " conceived " the invention of the steam engine. 
It was necessary for him to think out the means by which 
steam could be harnessed, before his conception was com- 
plete. In a patent suit, and also in the Patent Office, it 
often becomes necessary to prove which of two persons was 
the first inventor of the device in question. As it usually 
takes some time, depending on the nature of the invention, 

6 



to reduce an invention to practice after it has been con- 
ceived, the law allows an inventor to take his date of 
conception of the invention as the date on which the inven- 
tion was made, providing he has been diligent in reducing 
his invention to practice (seep. 8). The proof of this date 
of conception may, therefore, be of the utmost importance. 
The unsupported statement of an inventor that he con- 
ceived an invention in January, 1897, for instance, would 
probably not be accepted as proof in a court of law, but if 
a description in a diary, or a dated drawing, witnessed by 
some other person, were introduced, it might prove this 
date of conception. Inventors and all manufacturers should 
bear this in mind, and endeavor to have their inventions 
evidenced in permanent, visible form, and duly witnessed as 
to the date, as soon as possible. Evidence as to this is 
often gotten from the time-slips of workmen, but a better 
plan, and one which inventors and manufacturers would 
do well to follow, is to have a broad blank book for the 
entry of all experiments and their results, as well as for 
rough or complete sketches. 

We will suppose James Watt has just thought of the 
utilization of steam in an engine, and Thomas A. Edison is 
working in the same room to invent the incandescent light. 

The entries in the book might be as follows : 

Jan. 5, 18 — . Saw steam raise lid of kettle last night. 
Thought steam power might be applied to running a 
machine. To-day made the sketch shown on opposite 
page of engine to utilize steam. 

Witness, J. Smith. J. Watt. 

Jan. 8, 18 — . Thought that as oxygen supports com- 
bustion, why could not a current of electricity be sent 
through a conductor in a vacuum and become white hot 
to produce light without being burned up. 

Witness, J. W. T. A. Edison. 

Jan. 11, 18 — . Tried sending current of electricity 
through fine copper wire in exhausted glass bulb. Wire 
doesn't give much light. Bulb tagged No. 15. 

Witness, J. S. T. A. E. 

Feb. 23, 18—. Completed engine as per sketch of Jan. 
5, and ran it to-day. Works all right. Ran lathe by it 
in presence of Edison. 

Witness, T. A. E. J. Watt. 



Feb. 25, 18 — . To-day tried carbon' filament (length 
10 inches, resistance 220 ohms) in exhausted bulb with 
current of 110 volts pressure. Gives good light and fila- 
ment not burned up. Bulb and filament tagged No. 16. 
Witness, J. Watt. T. A. Edison. 

This would show a conception of the invention by Watt 
on Jan. 5, because the reduction to practice on Feb. 23, 
by the successful engine, in accordance with the drawing 
made on Jan. 5, proves that on Jan. 5 Watt knew just 
how to build a successful engine. On the other hand 
Edison did not conceive the successful incandescent light 
till Feb. 25, the same day as his reduction to practice, be- 
cause on Jan. 8, he had only a hazy and undefined idea, 
and his experiment of Jan. 11 was a failure. Watt could 
therefore carry his date of invention back to Jan. 5, but 
Edison only to Feb. 25. The bulb No. 15, and bulb No. 
16 would be put away for future reference, and, in proving 
his date of invention, bulb No. 16 would show just what 
was invented on Feb. 25. Such entries might be made on 
separate sheets of paper and filed away, although a book 
used for such purposes alone is the better. The reports are 
full of patent suits which have been won or lost by taking 
or neglecting these simple precautions. Just what was 
thought of or done, and the results, should be stated, and 
the means by which the results were accomplished should 
be identified, and everything dated and witnessed. 

Diligence in reduction to practice does not mean that 
an inventor must spend all of his time, or even part of 
every day, in working on his invention, but he must show 
that he has not abandoned the idea. It may take months, 
and perhaps years even, to reduce the invention to practice. 
Six months might be a long time in which to reduce a con- 
ception of a new button to practice, but it would be a very 
short time for the reduction to practice of a new linotype 
machine or submarine boat. 

A device, to be a reduction to practice, must be opera- 
tive. This does not mean that it must be perfect, but it 
must accomplish, to a reasonable extent, the purpose for 
which it was intended. It may be rough, not constructed 
of the best materials, the parts might be better propor- 
tioned, etc., but yet be a reduction to practice. 



Joint Inventors. — Joint inventors are entitled to a joint 
patent, and neither of them can legally obtain a patent for 
an invention jointly invented by them. Independent in- 
ventors of distinct and independent improvements, even in 
the same machine, are not joint inventors in the eye of the 
patent law. Where two persons, working together, are 
striving to accomplish a certain result and they go forward 
by mutual suggestions and consultations, one contributing 
one idea and the other another idea, they are joint in- 
ventors. A joint application must be filed by them, for the 
patent will be void if only one applies. If, however, the 
patent is to issue to only one of them, the proper course is 
for both to apply and one make an assignment of his 
right to the other. 

This question of joint invention often arises between 
employer and employee. For example, suppose the em- 
ployer comes to the skilled workman and gives him 
drawings of the invention and says to him, "John, 
I want you to make a drill chuck as shown here. 
You may have to alter some of the parts to get tbe 
best results, but I want the clutching arrangement to be 
as shown in the drawings.'* The workman then con- 
structs the chuck, following the instructions of the draw- 
ings, but substitutes a spring for the weight shown in the 
drawing, or a screw for the wedge shown, or makes other 
alterations such as would occur to a skilled mechanic but 
which do not materially change the operation of the 
device. The workman is not a joint inventor with the 
emplo}-er, for he has merely exercised his mechanical skill 
in making the chuck according to the instructions given 
him. It is true he may have turned out a better chuck, 
because of the substitutions mentioned, but those changes 
were such as would suggest themselves to any skilled 
chnckmaker, and do not rise to the dignity of invention. 

On the other hand, suppose the employer comes to the 
workman and says, "John, that chuck on our lathe doesn't 
work well. There ought to be some sort of an arrangement 
to get more power out of it, and it ought to hold the drill 
steadier. I want you to change that chuck to do this." 
The workman then goes ahead by himself and alters the 
chuck to accomplish these results. The workman is in this 
case the only inventor, for the employer gave him directions 



only as to the results to be accomplished, but the workman 
alone originated the means to accomplish those results. 

The fact that a device has displaced other similar 
devices in public favor and has had a wide sale may be 
persuasive, but is not conclusive, evidence of invention. 

WHAT MAY BE PATENTED. 

Sec. 4886 R. S. says : " Any person who has invented 
or discovered any * * * art, machine, manufacture, or 
composition of matter, or any * * * improvements 
thereof * * * may * * * obtain a patent therefor.' ' 

An Art. — The word "art" has two different meanings 
in the patent law. One is " the practical application of 
knowledge or natural ability," such as the " art " of wood- 
carving, the saddle-maker's " art," the " art" of painting, 
etc., which are collectively called the arts. This is the 
meaning of the word in Art. 1, Sec. 8 of the Constitution, 
which says that " The Congress shall have power * * * 
to promote the progress of science and the useful arts 
* * *." The word does not, however, have this meaning 
in § 4886. In that section of the statute the meaning is 
narrower, and is used to distinguish a certain class of 
patentable inventions, and its definition is the same as 
that of the word "process" or "method." A process, a 
method, and an art are therefore the same, with reference 
to this section of the statute. 

An art, process or method has been defined by the 
Supreme Court to be " an act or series of acts performed 
upon the subject-matter to be transformed and reduced to a 
different state or thing "; they have also said that it " re- 
quires that certain things should be done with certain 
substances in a certain order"; and "it may be said that 
processes of manufacture which involve chemical or other 
similar elemental action are patentable, though mechanism 
may be necessary in the application or carrying out of 
such process "; " the machinery pointed out to perform the 
process may or may not be new or patentable." It will 
be evident from the above definitions that there are many 
operations which may involve invention, but which are 
not patentable because they do not answer these require- 

10 



merits. It will be observed that the steps of a process or 
art must reduce the substance acted on "toa different 
state or thing." This does not mean that the substance 
must be changed in appearance or that chemical action is 
absolutely necessary. The Supreme Court said that pro- 
cesses which involved chemical action were patentable, but 
they did not say that a process which did not involve 
chemical action might not be patentable, and they did not 
define what they meant by "elemental action." The line 
of distinction between those acts which may be the sub- 
jects of valid patents and those which cannot be, has not 
yet been well defined. The majority of operations may be 
easily classified. It is evident that the addition of water 
to calcium carbide to produce acetylene gas is a patentable 
process under the above definitions, but it is equally 
obvious that a new series of steps for computing interest, 
or a new scheme of advertising in a newspaper, are not 
patentable processes, because neither answers the require- 
ments laid down by the Supreme Court as mentioned 
above. The Supreme Court has said that a process 
which requires machinery in carrying out the steps 
thereof may be patentable, but that those processes 
" which consist solely in the operation of a machine 
are not." Accordingly the so-called "method" of pro- 
pelling a bicycle which consists in transmitting power 
to the hind wheel by means of a crank, a chain and 
a pair of sprockets, would not answer the require- 
ments of a patentable method or process, because the 
material acted on (the bicycle) is not changed in any way 
or " reduced to a different state or thing." 

There is a further class of so-called "methods" or 
"processes " which are less easily distinguished, but which 
are also unpatentable. It is often said, for example, that 
a board is undergoing the " process " of being planed, and 
the operation seems at first sight to answer the require- 
ments of an "art" as defined by the Supreme Court. It 
in fact does not. The reduction "toa different state or 
thing," referred to by the Supreme Court as necessary, is 
not merely a change in form. It must be something 
further than this. The board is reduced to a different state 
in the sense that it is made more smooth, but the wood of 
the board is not changed in any way. It is the same wood 

11 



as before and has the same characteristics. If the planing 
effected some change in the wood itself, such as making it 
less liable to rot, or changed it from a fibrous to a cellular 
formation, the process would probably be patentable be- 
cause of the chemical "or other elemental action" which 
altered the wood itself. On the other hand a court has 
said, regarding the treatment of paper by moistening it 
and then pounding the sheets, that "the treatment of 
paper in this instance is of a character to change its qual- 
ity, giving it new and useful attributes." Acts, apparently 
insignificant, performed on a substance, such as the 
application of heat, cold, electricity or moisture, etc., may 
in some cases give patentability to a process. The fact 
that a machine is used to carry out a process does not 
necessarily make the process unpatentable. The dividing 
line between processes which are patentable and those 
which are not is not well defined, and each case must be 
decided in view of the particular circumstances surround- 
ing it: - 

It will be evident that if it is desired to patent an opera- 
tion the patent will be broader, /. e., more comprehensive, 
if the operation is claimed as a process than if it is claimed 
as a machine, for a process is the same whether it is carried 
out by hand or by means of a machine. 

A machine is an instrument composed of one or more of 
the mechanical powers, and capable, when set in motion, 
of producing certain physical results. It may be auto- 
matic, as an ordinary clock, or it may run by the applica- 
tion of external power, as a sewing machine. An attach- 
ment to a sewing machine for forming buttonholes may 
be a machine distinct from the sewing machine itself. 

Manufacture. — The limits of this class of inventions are 
not well defined in the patent law, but it includes nearly 
all those articles made by hand or machinery and which 
are not machines or compositions of matter. 

A composition of matter has been defined to be "an 
instrument formed by the intermixture of two or more 
ingredients, and possessing properties which belong to 
none of these ingredients in their separate state." A chemi- 
cal compound is a good illustration of a composition of 

12 



matter. The artificial production of a substance which has 
previously existed in nature — salt, for example — is not the 
production of a new article, although the process which 
produces it may be new. 

Improvements on pre-existing subjects of invention are 
patentable, and justly so, for the improvements made on 
an original invention are often as meritorious as the 
original invention itself. 

A principle or law of nature is not patentable (although 
the means for making use of that law may be), because it 
is not a means, and furthermore is not new. It cannot be 
originated because it has always been old, although it may 
be newly observed. When Newton saw the apple fall from 
the tree he reasoned from it and " discovered " the law of 
gravitation, but that law had been in force from the be- 
ginning of the world. A new pile-driver which makes use 
of that piinciple is, however, patentable. 



UTILITY, 

An invention, to be patentable, must, according to 
§ 4886 R. S., be " useful." It must be capable of conferring 
a benefit on the public. This does not mean that the mere 
fact that an invention can be used is sufficient. It 
must be helpful to mankind. If it is immoral, unavoidably 
injurious, or useful only to commit a breach of the laws, it 
is unpatentable. If, however, it is legally useful even to 
only a slight degree, it is patentable. It might be con- 
tended that the invention of a new and subtle poison 
would tend to increase crime, and that on that account 
the invention would not be " useful"; but the poison 
might be of great benefit in ridding a locality of locusts or 
rabbits, or it might be used as a powerful stimulant in 
medicine, as certain poisons are now used, and thus become 
a great help to the world. Practically any legal utility 
will be sufficient. It is obvious that absolute lack of legal 
utility in an invention will seldom be found. 



13 



NOVELTY, 

An invention, to be patentable, must, by § 4886 R. S., 
be "new," that is, the difference between it and what is 
already known to the public must be sufficient to have 
involved invention to produce. Until 1836 it was neces- 
sary that an invention, to be patentable, should be ab- 
solutely new. Knowledge by persons in a foreign country, 
no matter how remote or for how short a time, would 
prevent the grant of a patent in the United States and 
would render void a patent already granted, even if the 
domestic inventor believed himself to be the original dis- 
coverer. This injustice was remedied in the law of 1836, 
which prevented mere knowledge or use in a foreign 
country, before the invention here, from barring the grant 
of a patent. Prior knowledge and use are discussed here- 
after (p. 17). 

Two inventions may be legally the same, except in 
designs (p. 50), although they are embodied in widely 
different forms. A railroad locomotive, a steam drill and 
a stationary hoisting engine are widely different forms, 
each containing the invention of a sliding piston and a 
valve for admitting steam to the piston on alternate sides. 
Those means for harnessing the expansive power of steam 
are broadly the same, and operate in substantially the 
same manner. Salt is the same whether it is dug out 
of the earth, made by the union of two chemicals in 
the laboratory, or by the evaporation of sea water. On 
the other hand, an invention may appear to be the same 
as something already known, but on examination will 
be found to have characteristics or a mode of operation 
entirely different, and to produce different results, which 
may make the invention legally new. 

Identity or diversity of size, shape, materials, or 
arrangement, unless those characteristics form the gist of 
the inventions, are not proof that the inventions are the 
same or different. 

Mechanical Skill. — The exercise of mere mechanical skill 
does not involve invention. A workman will make 
changes or substitutions in a device, which his experience 

14 



H I Il l M il 1 1 — 



teaches him would be advantageous, without exercising 
anything more than mere work-room skill. If it would 
occur to a skilled workman to make those changes, he 
has invented nothing — has produced nothing patentably 
"new," — although that particular form of the device may 
never have existed before. Carpenters, machinists and 
almost all workmen are called upon every day to adapt 
the materials they are working on to some new situation 
and to construct devices which have never before existed 
in that precise form, without exercising their inventive 
faculties. 

So too a skilled workman will substitute one means of 
accomplishing a result for another which his experience 
tells him will do as well, or perhaps slightly better. He 
makes a pipe of brass in place of lead, substitutes a cam in 
a machine for a lever originally there, a spring for a 
weight, or a wedge for a screw, and accomplishes the same 
results as before. They perform the same functions in sub- 
stantially the same way, and are known as " equivalents. " 
The substitution of one mere equivalent for another does 
not involve invention. The Supreme Court decided that 
as doorknobs had been made of metal it did not involve 
invention to make them of earthenware, it being a mere sub- 
stitution of materials. What may appear to be a mere sub- 
stitution of equivalents may, however, be a patentable 
invention. If the substituted element has some decided 
advantage over the former element whereby a result is 
accomplished which it was not known the substituted ele- 
ment would accomplish, the change may be sufficient to 
confer patentability on the new device. The decision as to 
whether or not a change involves patentable invention 
depends on the circumstances of each particular case, and 
no invariable rule can be laid down in regard to it. 

Coming under the head of mechanical skill is the ques- 
tion of " double use," which is akin to the above- discussed 
"doctrine of equivalents." The United States Supreme 
Court recently said that " doubtless a patentee is entitled 
to every use of which his invention is susceptible." Con- 
versely, if the public has the right to use an invention, it is 
entitled to all the uses to which that invention alone may 
be applied. The discovery of a mere new use to which an 
invention may be put is not the discovery of anything 

15 



patentable under the laws of the United States. It is not 
the discovery of any new process or thing. A bellows 
used to blow a fire is the same bellows if used to blow 
insect powder over plants. The discovery of the new use 
to which it could be put did not charge the bellows in the 
least. The process of treating plants by blowing powder 
over them may be new and patentable, but the bellows 
itself is old. The Supreme Court has said, in regard to 
this doctrine of double use, "when a patented device is a 
mere improvement upon an existing machine, * * * the 
solution is ordinarily free from difficulty. But where the 
alleged novelty consists in transferring a device from one 
branch of industry to another, the answer depends upon a 
variety of considerations. In such cases we are bound to 
inquire into the remoteness of relationship between the two 
industries; what alterations are necessary to adapt the 
device to its new use, and what the value of such adapta- 
tion has been to the new industry. If the new use be 
analogous to the former one the court will undoubtedly be 
disposed to construe the patent more strictly, and to re- 
quire clearer proof of the exercise of the inventive faculty 
in adapting it to the new use — particularly if the device be 
one of minor importance in its new field of usefulness. On 
the other hand, if the transfer be to a branch of industry 
but remotely allied to the other, and the effect of such trans- 
fer has been to supersede other methods of doing the same 
work, the court will look with a less critical eye upon the 
means employed in making the transfer." 

To be an anticipation of an invention the invention 
must be clearly and fully disclosed. A mere hazy, un- 
defined description, which might or might not have been 
intended as a description of the particular invention under 
consideration, is not enough. The disclosure must be 
complete and clear and leave nothing to conjecture or to 
the imagination. On the other hand, as explained hereto- 
fore, two inventions which differ widely in form, materials, 
capacity, size and finish may be identical or equivalents in 
the eve of the Patent Law. 



16 



PRIOR KNOWLEDGE OR USE. 

Section 4886 R. S. provides that, to be patentable, an in- 
vention must not have been "known or used by others in 
this country before his invention or discovery thereof." 

In the first place, the mere knowledge or use of the in- 
vention in a foreign country is not sufficient to anticipate 
an invention made in the United States. If an inventor, at 
the time of making his application for a patent, believed 
himself to be the original and first inventor or discoverer 
of the thing applied for, the patent will not be refused, nor 
declared void if already granted, merely because the in- 
vention or discovery had been known or used in a foreign 
country before his invention or discovery thereof, if it had 
not been patented or described in a printed publication. Prior 
patents and publications are discussed hereafter (pp. 19, 22) . 

Until 1836 knowledge or use in a foreign country pre- 
vented the grant of a patent here, but since then this unjust 
restriction has been removed. The knowledge or use, even 
in this country, must be before the invention or discovery 
here. In England, Germany, France, and most other 
foreign countries, knowledge or use in the home country 
before the application for the patent is fatal. It must be 
absolutely new " within the realm " at that time. In the 
United States, however, such knowledge or use, to be a 
bar to a patent, must, unless public (p. 23), have been 
before the invention or discovery. This gives the inventor 
a chance to perfect his invention before he files his appli- 
cation, which is obviously a just and equitable provision. 
The invention or discovery which must antedate any 
knowledge or use in this country need not be complete, 
that is, the invention need not be reduced to practice at 
that time. If the invention has been conceived before, and 
followed up by diligence to a reduction to practice after, 
the knowledge or use in this country, it will be a sufficient 
compliance with this requirement of the statute. Con- 
ception and reduction to practice of an invention have 
been discussed (pp. 6-8) . 

The prior knowledge meant in this section of the statute 
is not the mere knowledge that the invention exists some- 
where or has existed. It has been held that where a 
person goes to a foreign country and sees an invention 

17 



there and conies to the United States with the information 
he has obtained, that mere fact does not constitute the 
"knowledge," as meant by this section of the statute, if 
that knowledge has not been followed up by a production 
of the invention itself in this country. 

The prior knowledge which will prevent the grant of, 
or invalidate, a patent, must be a complete understanding 
of the invention itself, and the invention must be operative. 
If a knitting machine, for example, was imported into this 
country in a closed box and lay in a storehouse in that 
condition for a year, and during all that time the importer 
knew that the machine was there but had not seen it, this 
knowledge of his would probably not be a knowledge of 
the machine sufficient to invalidate a patent granted for an 
invention of the same thing in this country. He knew 
there was a knitting machine in his storehouse, but he did 
not know how it was constructed or how it operated, and 
if the machine had been destroyed before he obtained a 
more complete knowledge of its construction, the public 
would be no better off than before the machine was im- 
ported, for the importer could not disclose to it what he 
himself did not know. The knowledge required must, in 
the case of a machine, be an understanding of the con- 
struction of the essential parts of the invention sufficient 
for the reproduction of the same. 

The prior use referred to in this section of the statute is 
not necessarily a public use, although the two are often 
confused. A knowledge and use may not be accessible to 
the public generally, and yet be an anticipation of an in- 
vention. The process by which the well-known Lea & 
Perrins' Worcestershire Sauce is made is carefully guarded 
by the makers in this country, and is known to only a few 
persons, but such persons have a knowledge of this process 
which would probably be sufficient in the Patent Law to 
anticipate a later invention of the same process. 

An invention may have been known and used for years 
in this country before a later invention, and yet be insuf- 
ficient to prevent the grant of a patent therefor. This is 
the case in the so-called "lost arts'* where an invention, 
once well known and employed, has been forgotten, so that 
no one can now practice the same. An illustration of this 
is the process of tempering copper in use by the Aztecs in 

18 



Mexico at the time of the conquest. We still have their 
swords and other implements of tempered copper, but no 
one knows what the process was, and although it may 
have been practiced for years in this country it is now a 
" lost art," and would probably not prevent a later dis- 
coverer from obtaining a patent for such process. 

Prior knowledge or use, to anticipate a later invention, 
must be proved clearly and convincingly. 



PRIOR PATENT. 

If an invention is disclosed in a prior patent it is an 
anticipation, and it is immaterial whether the prior patent 
was granted by the United States or some foreign power. 
It must, however, be a public document, must be accessible 
to the public, issued before the date of the other invention, 
or more than two years before the application for the other 
invention (except as specified on p. 20), must be for the 
same invention, and must disclose the invention in such 
a full and complete manner as to put persons skilled in 
that art in full possession of all the essential parts of the 
invention. 

The patent must not only be issued by some govern- 
ment, but it must be a public document. If it is private, 
a communication open only to one or a limited num- 
ber of persons, it is not sufficient as an anticipation. 
Thus an application for a patent, or a provisional specifica- 
tion in England, or even an English complete specification 
when first published, is not a patent. The date of sealing 
the patent usually determines the date of the patent in the 
sense used in § 4886. The patent must be accessible to the 
public. It is not necessary that the public should have 
actually inspected it, — if the public had the right to inspect 
it when they wished, it will be sufficient. It seems unjust 
that an obscure patent in a foreign country, which would 
probably have rested in a pigeon-hole for years without 
being seen by a single person, should serve to invalidate a 
later patent granted in this country, but the theory is that 
the public could have obtained the knowledge of the in- 
vention. The prior patent must have conferred some ex- 
clusive privilege in the matter patented. The prior patent 

19 



must, to be an anticipation, disclose the same invention as 
the one to be anticipated, and it must be clearly the same. 
The disclosure must also be complete, so as to put the 
public fully in possession of the disclosed matter. If the 
description is vague, uncertain, ambiguous or leaves any 
essential part to be invented, it is insufficient. It often 
happens that a patent, set up as an anticipation, discloses 
an invention from which, using our present knowledge of 
the art, it would seem that it did not involve invention to 
produce the invention alleged to be anticipated. It is not, 
however, our present knowledge of the art which is the 
guide, but the knowledge of the art as it was at the time 
the patent was granted. The advance in the arts is so 
rapid that what may be a well-known work-room ex- 
pedient to-day may have involved a high degree of invention 
to produce ten years ago. 

As the law stands at present, a patent or printed publica- 
tion will prevent the grant of a patent, or invalidate one if 
already granted, unless the application for the later patent 
was filed within two years of such patent or publication. 
This seems to mean that if an invention is disclosed in a 
patent or printed publication, a patent cannot in any case 
be obtained therefor unless the application is filed within 
two years thereof. This apparently prevents an inventor 
from carrying his date of invention back more than two 
years in order to antedate such an alleged anticipation. 
This rule, however, does not apply to any patent granted 
prior to Jan. 1, 1898, nor to a patent granted on an appli- 
cation filed prior to such date. The words " or more than 
two years prior to his application " in § 4886 were inserted 
by the law of March 3, 1897, which instituted the rule 
above noted. Before that time a patent or printed publi- 
cation, to be an anticipation, must have been before the 
invention or discovery. By*the law as it then stood an ap- 
plicant or patentee might carry his date of invention back 
and antedate a patent or printed publication, although his 
application had been filed more than two years thereafter. 
For example, A makes an invention in May, 1895, and 
works on the same in perfecting it until November, 1897, 
when he applies for a patent. A patent granted in July, 
1895, is cited against his application, but A can carry his 
date of invention back to May, 1895, and prove that he 

20 



made the invention at that time, previous to 'the grant of 
the patent. If, however, he had not applied till January, 
1898, he could not obtain his patent, as the anticipating 
patent would have been granted more than two years 
before his application. 

In consequence of this change in the laws, inventors 
cannot now safely delay the filing of their applications, as 
a patent or printed publication more than two years old at 
the date of their application will apparently be an absolute 
bar to the grant of a patent. 

Limitation by Foreign Patent. — The law, as it controls 
applications, and patents granted on applications, filed 
before Jan. 1, 1898, stated that "every patent granted for 
an invention which has been previously patented in a 
foreign country shall be so limited as to expire at the same 
time with the foreign patent, or, if there be more than 
one, at the same time with the one having the shortest 
term, and in no case shall it be in force more than seven- 
teen years." The effect of this was to limit the United 
States patent so that it expired at the same time with 
the earliest expiring previously granted foreign patent. 
Of course the foreign patent must have been for the same 
invention, and taken out, or caused to be taken out, by the 
same party. If the foreign patent was granted before the 
grant of the United States patent, the latter patent was 
limited, whether the application here was filed first or not. 
If the foreign patent expired before the patent here was 
granted, it made void any patent granted in this country. 

The statute was changed by the law of March 3, 1897, 
to read : " No person otherwise entitled thereto shall be de- 
barred from receiving a patent for his invention or discovery, 
nor shall any patent be declared invalid by reason of its 
having been first patented or caused to be patented by the 
inventor or his legal representatives or assigns in a foreign 
country, unless the application for said foreign patent was 
filed more than seven months prior to the filing of the 
application in this country, in which case no patent shall 
be granted in this country." This change in the law prob- 
ably removes all limitation of a United States patent by a 
foreign patent except where the former is rendered void 
because the foreign application was filed more than seven 

21 



months prior to the application in this country. An inventor 
in a foreign country especially should be careful to see that 
his United States application is filed as soon as possible, 
at least within seven months after the filing of the foreign 
application. The statute states in effect that the invention 
must have been " first " patented in a foreign country, i. e., 
the foreign patent must have been granted before the 
United States patent is granted, consequently even if the 
application in this country has not been filed within said 
seven months, a patent may be issued here providing the 
grant of the foreign patent is kept back until after the 
United States patent is granted. The statute as now in 
force does not apply to any application filed before January 
1, 1898, nor to any patent granted on such an application. 

PRIOR PUBLICATION* 

Much that has been said heretofore in regard to the 
effect of a prior patent is applicable in the case of a prior 
publication. It must be a work of a public character — i. c, 
intended for general use, — must be accessible to the public, 
published before the date of the invention alleged to be an- 
ticipated (or more than two years before the application 
in this country if the application was filed since December 
31, 1897. See p. 20), it must disclose the same, and an 
operative invention, and must be clear and complete in its 
disclosure. A private letter has been held to be not a pub- 
lication although read by a number of persons ; it must 
have been directed, or accessible, to the public in general. 
A trade circular sent to the persons interested in a particular 
trade only has been held to be not a printed publication, 
but one which had been deposited in a public library 
became thereby a printed publication. The publication 
may not be of general interest, but if the public have gen- 
eral access to it, whether they have actually inspected it or 
not, the public character of the disclosure is assured. For 
this reason the printing and offering for sale to any one of 
the drawings and complete specification of an English ap- 
plication some weeks before the patent is finally sealed 
constitutes a " publication " in the eye of the law, although 
technically it is not then a patent. The publication must 

39 



disclose the invention so fully that any one skilled in that 
particular art could practice and reproduce the invention. 
As in the case of a prior patent, the publication, if more 
than two years before the application in this country, or 
before the date of invention, will be an anticipation ; but 
in the case of an application filed before January 1, 1898, it 
must have been before the date of invention. 



PUBLIC USE OR SALE. 

Section 4886 R. S. states that, to be patentable, an in- 
vention must not have been " in public use or on sale in this 
country for more than two years prior to his application.' ' 
This does not mean that, to be an anticipation, the use 
must have actually been by, or the sale to, the public. If 
the invention has been used before the public, or even by or 
before a single member of the public, with no promise by 
that person to keep it secret, it may constitute a " public 
use." The unrestricted wearing of a corset, in which were 
the newly invented steels, by one woman for several years 
has been held to be a "public use." Likewise the offering 
for sale to any one of an article has been held to place that 
article "on sale " whether it was actually sold or not. 

An experimental use, carried out for the purpose of testing 
the capability or merits of the invention, is not a public 
use. The inventor shows by a use for experiment that he 
does not yet consider his invention is perfected, and this 
use, although it may go on for years, will not, if in good 
faith, prevent him from obtaining a valid patent. If the 
inventor uses the invention in public, or allows the public 
to use it, he must be extremely careful to be able to show 
that such use is for experiment, or his patent may be de- 
clared invalid. For example, suppose he has invented a 
new drinking fountain. He might set one up in a public 
square and allow every one to use it for the purpose of test- 
ing it in actual operation ; but he should keep track of how 
it operated, examine it at intervals to see if it is working 
properly or does not need a change in some of its parts, 
and make needed changes, etc. Such a use is alwa3 f s dan- 
gerous in its possible effect on the patent. An inventor can- 
not be too careful to make it evident that the use is for ex- 

23 



periment only, and he should make his application as soon 
as he is satisfied that the invention is reasonably perfected. 
Receiving money for the use of the invention is not proof 
of public use, but is in some cases very persuasive evidence 
to that end. On the other hand, it may be necessary to sell 
a device to have it operated experimentally. It might be 
necessary to use a railroad locomotive for several years to de- 
termine, by the experiment of continued wear, if a certain 
invention was perfected, and it would be none the less an 
experimental use because the inventor sold the locomotive 
instead of using it himself. In this connection it may be 
well to state that sales "to test the market," i. e., to see 
whether a device will " take " with the public, are a com- 
mercial experiment, and not an experimental use in the 
sense meant by the patent law. 

The consent of the inventor is not a prerequisite to a 
" public use " of his invention. If he discloses it to a person 
without any injunctions of secrecy, and that person then 
goes out and uses it publicly, that use is a " public use." 
On the other hand, if the inventor makes the other person 
promise to keep the matter secret, but such person neverthe- 
less then uses the invention in public without the knowledge 
of the inventor, or if he steals the device from the inventor 
and then uses it in public, it is not such a public use as is 
contemplated by this section of the statute. 



ABANDONMENT. 

Section 4886 R. S. states that an invention may be patent- 
able " unless the same is proved to have been abandoned. " 
The word " abandonment " has been used with a variety of 
meanings. Where a person conceives an invention and takes 
some steps to reduce it to practice, but becomes indifferent 
to the outcome and throws the invention aside without in- 
tending to complete it, he has abandoned his intention of 
becoming an inventor. This is what is known as an aban- 
doned experiment. Where the inventor has produced the 
new invention but then relinquishes it and, without com- 
municating it to the public, forgets it completely, it be- 
comes a lost art. In neither of these cases has the invention 
been abandoned to the public, as the public has not known 

24, 



of the invention nor had access to it, consequently it is not 
in possession of the invention, and the inventor or any 
other person can then re-invent the same thing and obtain 
a patent therefor. Where, however, the invention is given 
to the public and the inventor relinquishes his claim to it, 
the public obtains full possession of the invention, and 
neither the inventor nor any one else is entitled to a patent 
thereon. 

Abandonment is a question of fact, and depends on the 
intent. If the inventor's intent was to give it to the public, 
the gift is irrevocable. This intent may be presumed from 
many different acts or omissions by him. Public use or 
sale by him, or with his consent or allowance, before his 
application, is evidence of abandonment. After his appli- 
cation it will not, alone, constitute abandonment. By a 
careless description or definition of his invention in his 
application papers he may waive the right to something 
disclosed therein. He may also abandon a part of his in- 
vention by failing to claim it in his patent, although it is 
disclosed therein. These are two common causes of con- 
structive abandonment. If he has on file a contempora- 
neous application, claiming the same matter, the failure to 
claim such matter in the other application does not work 
an abandonment. Narrowing or cancelling claims in con- 
sequence of alleged anticipating references cited by the 
Patent Office is constructive abandonment of the scope of 
the invention so omitted from the claims. This becomes of 
vital importance in the prosecution of applications before 
the Patent Office, and will be discussed hereafter (p. 33). 
The abandonment of an application does not necessarily 
constitute an abandonment of the invention. As to aban- 
donment of application by failure to prosecute, see p. 34. 

The inventor's right to recover for infringements of his 
patent may be abandoned so far as a particular person is 
concerned, or as to the public absolutely (see p. 48) . 

PATENTING OF INVENTIONS. 

Caveats. — When a person has conceived an invention, 
and desires further time to mature the same, he may file in 
the Patent Office a caveat. This is a paper setting forth 

25 



the invention in a general way and the distinguishing 
characteristics thereof, and praying protection of the in- 
ventor's right until he shall have matured his invention. 
The caveat is preserved in secrecy in the Patent Office and 
is operative for one year. If an application is made within 
that year by any other person for a patent for the same 
invention as is apparently set forth in the caveat, the other 
person's application is not passed to issue, but is withheld, 
and a notice is sent to the caveator that such an appli- 
cation has been filed. If the caveator files his application 
within three months of the time the notice was sent and it 
is found that his invention interferes with that of the other 
person, an interference (p. 35) is declared, and the parties 
then proceed to fight out the question of which was the 
prior inventor. If the caveator does not file his application 
within said three months the other application is passed to 
issue. Caveats can only be filed by a citizen of the United 
States or an alien who has resided in the United States for 
one year next preceding the filing of the caveat and who 
has made oath of his intention to become a citizen. The 
caveat may be renewed from year to year. It does not 
entitle the caveator to notice of an application for the same 
invention if that application was filed before the filing of 
the caveat or after the expiration of the year or an ex- 
tension thereof. The Government fee is $10. 

A caveat is not necessary in the majority of cases. In an 
experience of three years as an Examiner in the Patent Office 
in Washington, the writer had occasion to send notices to 
only two caveators, and when those caveators filed their ap- 
plications neither of the inventions interfered with the sub- 
ject of the previously filed application. Where an inventor 
has reason to think another person is likely to steal his 
invention and apply for a patent thereon, a caveat is a 
wise precaution and may preserve his rights. This is 
often so in the case of an experimental use of the invention 
in public before application. A caveat is not a patent nor 
an application therefor, and does not give the caveator the 
right to sue makers, sellers or users of the invention, nor to 
mark his invention u patent applied for." The Office 
makes no examination of the invention for novelty, therefore 
the caveator does not by it learn whether or not his 
invention is patentable. 

26 



Preliminary searches. — When a person has made an in- 
vention whose novelty is doubtful, a preliminary search 
may be advisable. This is a search, by my correspondent 
in Washington, through the class or classes in the Pat- 
ent Office where the invention is most likely to be found 
if it has been previously patented in this country. If it 
has been so patented, such a search will usually disclose 
that fact, and the inventor be saved the expense of filing an 
application for an unpatentable device. The cost of such a 
search is $5.00 for a single invention, and includes a copy 
of the nearest patents which the search discloses. 

It is not necessary, unless the invention is complicated, 
to send me the device itself, even when an application is to 
be made. A drawing, and a written explanation of what 
the inventor considers is his improvement over what is 
already known, will usually be sufficient, although a 
sample of the invention itself or a working model is desir- 
able. A working drawing is usually sufficient. If any 
part of the invention is not clearly understood by me, the 
inventor will be notified at once. 

The Application.— Section 4888 R. S. provides that : 
" Before any inventor or discoverer shall receive apatent 
for his invention or discovery, he * * * shall file in the 
Patent Office a written description of the same, and of the 
manner and process of making, constrticting, compounding 
and using it, in such full, clear, concise and exact terms as to 
enable any person skilled in the art or science to which it 
appertains, or with which it is most nearly connected, to 
make, construct, compound and use the same ; and in case 
of a machine, he shall explain the principle thereof, and the 
best mode in which he has contemplated applying that prin- 
ciple, so as to distinguish it from other inventions ; and he 
shall particularly point out and distinctly claim the part, 
improvement, or combination which he claims as his in- 
vention or discovery." The question as to who may be an 
applicant has been discussed heretofore (p. 5), also as to 
what may be patented (p. 10). 

The specification is for the purpose of completely dis- 
closing the invention to the public, and, by the claims, of 
defining the extent of the invention. If a mere description 
of the invention were all that was necessary it would be 

27 



a simple task to draw up the specification. Any mechanic 
skilled in the art could describe in writing the device in- 
vented so that its construction and operation could be 
understood, but this is the smallest part of the work re- 
quired to compose a properly drafted specification. It 
should be so expressed that a broad construction will be 
given to the claims, and the legal pitfalls are so many and 
so obscure that it should only be entrusted to a person who 
is well acquainted with the decisions of the United States 
Courts in patent cases, as well as with the procedure in the 
Patent Office. Many a patent has been rendered practically 
worthless, or even declared void, by reason of some ex- 
pression therein which correctly described the invention, 
but which cut down the scope of the invention because the 
application writer was not able to foresee the legal effect 
which such an expression would have when the patent 
comes before the courts for interpretation. The statement 
in the body of the specification of what the invention con- 
sists is a very frequent cause of a restriction of the patent. 
A patent is of little value if another person can, in spite of 
it, by a slight variation of the article patented, in effect 
make that article, but the courts are continually restrict- 
ing patents to the precise embodiment shown in the draw- 
ings, on account of some apparently innocent clause or 
even word in the specification. The specification serves to 
explain the claims, and, in order that the claims shall be as 
broad, i. e., as comprehensive, as possible, so as to include 
not only the embodiment shown in the drawings but also 
as many variations thereof as possible, the specification 
must explain them broadly. The writer, in the course of 
his experience in the examining corps in the United States 
Patent Office was struck with the fact that this phase of 
patent soliciting is neglected, or not properly understood, 
by the great majority of patent attorneys. 

The specification must disclose every essential element 
of the invention or the patent will be void. Matter not 
disclosed in some part of the application as first filed can- 
not legally be inserted thereafter in any way. This rule is 
invariable. But matter disclosed, but not completely, may 
be fully disclosed, if it was invented by the applicant before 
his application was filed, by amendment with a supple- 
mental oath. If the disclosure is vague or ambiguous it 

28 



mm 



may render the patent void. If the specification discloses 
more or less than the patentee's real invention, with in- 
tent to mislead the public, the patent is void. 

The government fee on filing the application is $15. 

Claims. — Section 4888 R. S. specifies that the applicant 
must " particularly point out and distinctly claim the part, 
improvement or combination which he claims as his inven- 
tion or disco very." This requirement is usually complied 
with by formal " claims" at the end of the specification. 
These are the backbone of the patent, for the patentee is 
supposed to have correctly stated in them the exact limits 
of his invention. He is absolutely bound by them, so long 
as his patent is alive. He cannot recover for the manufac- 
ture, use or sale of an article which does not fall within at 
least one of them, no matter how much of his actual inven- 
tion is included in that article, and this too even though 
he thought he had drawn the claim broad enough to cover 
that article. As said by Judge Blatchford in an early case. 
14 The rights of the plaintiff depend upon the claim in his pat- 
ent, according to its proper construction, and not upon what 
he may erroneously suppose it covers." The courts have 
the power to declare a patent or any of the claims thereof, 
void, but not to change the claims in any way. A claim 
is like a glass jar. It cannot be strained to include more 
than it fairly covers, nor unfairly contracted to avoid 
being destroyed by an anticipation in the prior art. A 
patentee is bound absolutely by them. If he has claimed 
the combination of two " elements," or parts, of his inven- 
tion, the courts cannot thereafter omit one of those ele- 
ments in order to make the patent broader so as to cover 
the real invention, nor will they distort the words of 
the specification or claim to include an element not named 
in the claim. Some inventors understand the technical 
reason for the phraseology used in claims, but the majority 
do not, probably from not appreciating the importance of 
exactness in this respect. The broader a claim is, the more 
modifications of the invention will it include, and, converse- 
ly, the narrower it is the less variations will fall within it. 
A claim is called broad when it contains few elements or 
necessary parts, and narrow when it includes many ele- 
ments. To be an infringement of a claim, the alleged in- 

29 



fringement must have all the elements enumerated in the 
claim. It will be obvious, therefore, that a claim reading 
"A table having a plurality of legs " alone, will describe a 
table having two, or ten legs, no matter how the rest of 
the table is constructed, but a claim reading "A table hav- 
ing four curved legs with ball and claw feet and a marble 
top " w T ill not include a three-legged table, nor one without 
ball and claw feet, nor one wdth straight legs, nor one with 
a wooden top, consequently although all these tables 
would be infringements of the broad claim they would not 
infringe the narrow one. The conditions which give a 
claim a broad or a narrow construction are so numerous 
and obscure that an inventor should not attempt to decide 
such questions without the advice of competent counsel. 

The courts may declare one or more of the claims of a 
patent void and uphold the rest, and the patent will be 
valid to the extent of the remaining claims. A claim must 
not be vague, ambiguous or functional, nor claim a result 
merely, nor more than the inventor is entitled to, or it will 
be absoloutely void. It should not be alternative nor 
expressed in any but the well-recognized technical terms, 
although such claims are not necessarily void. 

The practice in the Patent Office as to the " joinder of 
inventions " in one application is now that two or more 
independent inventions cannot be claimed in one appli- 
cation, such, for example, as a new wheel for a carriage and 
an improvement in dashboards, as the two do not co- 
operate to produce a unitary result. But where several 
distinct inventions are dependent on each other and mutually 
contribute to produce a single result, they may be claimed 
in one application. Claims for a process and its product 
may be presented in the same application, but claims for a 
machine and its product cannot be joined, nor can a 
machine and the process in the performance of whieh the 
machine is used be claimed in the same application. The 
courts have not uniformly insisted upon such rules. It 
would seem that the Government has as much right to 
grant a single patent for two independent inventions as it 
has to grant a single land patent for two independent 
strips of its territory. The Patent Office practice in that 
respect must, however, be followed in taking out patents. 

A single claim may protect the inventor's rights com- 

30 



pletely, but it is usually the better practice to draw several 
claims, some broad and others more specific. The number 
and form of the claims, however, depends upon the circum- 
stances of each case, and should be left to the discretion of 
a competent attorney. There is probably no legal instru- 
ment which requires a more thorough knowledge of the 
technicalities of patent law than the claims of a patent. 
They are the most important part of the patent, and in- 
ventors should, therefore, entrust their cases only to one 
who is well versed in patent practice in all its phases. 
The Patent Office, in its book of "Rules and Practice," 
states that " an applicant, or an assignee of the entire in- 
terest, may prosecute his own case ; but he is advised, unless 
familiar with such matters, to employ a competent attor- 
ney, as the value of patents depends largely upon the skill- 
ful preparation of the specification and claims. " A little 
knowledge is a dangerous thing. 

A drawing must be furnished when the invention is 
capable of illustration, and must show every part of the 
invention claimed. 

The applicant, if the inventor, must make oath or 
affirmation that he does verily believe himself to be the 
original and first inventor or discoverer of the art, machine, 
manufacture, composition, or improvement for which he 
solicits a patent; that he does not know and does not be- 
lieve that the same was ever before known or used, and 
must state of what country he is a citizen, and where he 
resides. In every original application the applicant must 
distinctly state under oath that the invention has not been 
patented to himself or to others with his knowledge or 
consent in this or any foreign country for more than two 
years prior to his application, or on an application for a 
patent filed in any foreign country by himself or his legal 
representatives or assigns more than seven months prior 
to his application. If any such application has been filed 
prior to his application in this country, he must state the 
country or countries and give the date of the application ; 
the oath must also state that to the best of his knowledge 
and belief the invention has not been in public use or on 
sale in the United States, nor described in any printed pub- 
lication or patent in this or any foreign country for more 
than two years prior to his application in this country. 

31 



If the application is made by an executor or administrator 
of a deceased person, or the guardian, conservator or repre- 
sentative of an insane person, the form of the oath must be 
correspondingly changed. The oath may be made before 
any person within the United States authorized by law to 
administer oaths; or, when the applicant resides in a 
foreign countr\-, before any minister, charge d'affaires, con- 
sul or commercial agent holding commission under the 
Government of the United States, or before any notary 
public of the foreign country who is authorized by law to 
administer oaths. The officer's official seal must always 
be affixed. 

When the oath is taken before an officer in a country 
foreign to the United States, all the application papers 
must be attached together and a ribbon passed one or 
more times through all the sheets of the application, and the 
ends of the ribbon brought together under the seal before 
the latter is affixed or impressed, or each sheet must be 
impressed with the official seal of such officer ; or, if he is 
not provided with a seal, then each sheet must be initialed 
by him. An oath is not an absolute prerequisite to the 
grant of a valid patent, but is always required. 

A model need not be filed in each case, unless called for 
by the examiner. 

When the invention or discovery is a composition of 
matter, the applicant, if required, must furnish specimens of 
the composition, and of its ingredients, sufficient in quantity 
for the purpose of experiment. In all cases where the com- 
position is not perishable, a specimen of the composition 
claimed, put up in proper form to be preserved by the office, 
must be furnished. 

Procedure in the Patent Office. — When the application 
is filed in the Patent Office, it is referred to one of the exam- 
ining divisions, and is usually taken up for examination 
within a month from the date of filing. The examiner 
reads the application papers and then searches through the 
proper classes of the patents, publications and other re- 
cords, both domestic and foreign, in the Patent Office, to 
see if the claims are allowable. He then writes a letter to 
the applicant, in care of the attorney, stating the result of 
said search. Usually some of the claims, possibly all of 

32 



them, are rejected at this first action. The examiner cites 
the patents or other anticipating matter which he has dis- 
covered, and gives his reasons why he does not consider the 
rejected claims are patentable. 

The applicant's attorney then considers the references 
cited, and decides for himself whether the rejected claims are 
in fact anticipated by the matter cited by the examiner. 
If he decides that they are not, he asks for a reconsideration 
of the official action, stating why, in his opinion, the refer- 
ences do not meet the claims. If, on the other hand, he 
decides that the references do in fact show that some of the 
invention is old, he cancels the claims rejected, amends 
them to avoid the references, or substitutes new claims 
therefor. The examiner then acts upon the case in its 
changed condition, and this action on the part of the exam- 
iner and the attorney goes on till the application is allowed 
or some of the claims are finally rejected. It is nothing 
against the judgment of the attorney that the claims are 
rejected in the first action or in subsequent actions. On 
the contrary it shows that he has presumably claimed at 
least all that the inventor is entitled to, and if he has 
claimed more than is patentable, he can cut down the scope 
of the claims by amendment to the extent of the inventor's 
rights. 

It is in amending the claims, so that they avoid the re- 
ferences and yet protect the inventor to the fullest extent 
possible, that the attorney shows his skill. He must have 
the legal knowledge to foresee what will be the legal effect 
of his actions, for otherwise he may, by his amendments, 
unconsciously abandon to the public the real invention of 
the applicant. For example, when an applicant cuts down 
the scope of, or cancels, rejected claims and allows the pat- 
ent to issue, he is conclusively supposed to have aban- 
doned the amount so cut out, and the courts cannot and 
will not reinsert such matter. Such amendments are there- 
fore of vital importance (see p. 25) . Anything disclosed in 
the application, but not claimed therein, or in a co-pend- 
ing application, is prima facie presumed to have been 
abandoned or not invented by the applicant. In all cases 
of doubt as to patentability, the doubt should by law be 
resolved in favor of the applicant. All official correspon- 
dence with the Patent Office should, by its rules, be carried 

33 



on in writing. Oral interviews with examiners are neces- 
sary only in exceptional cases, e. g., when the examiner 
has repeatedly refused to allow a claim, and can be carried 
on by the writer's correspondent in Washington or, if 
desired, the writer can make a trip to Washington for a 
personal interview. 

The failure for one year to properly respond to an 
action by the Patent Office on an application works a 
presumptive abandonment of the application. On applica- 
tions filed before Jan. 1, 1898, the period is two years. 
Usually inventors do not wish to have the issue of their 
patents delayed, and it is the writer's practice to amend 
rejected applications as soon as possible after the letter of 
rejection is received. The law, however, does not require 
an application to be amended more than once within one 
year from a rejection. This is often of practical importance 
where a valuable invention has been made, particularly in 
a new field. By amending applications only just within 
the necessary time, such applications have been purposely 
kept in the Patent Office for years before being allowed, 
while the art has developed, and when the patent finally 
issued an enormous number of makers, users and sellers of 
the invention were put under contribution. The writer 
has in mind a patent, covering two of the fundamental 
parts of probably three-fourths of the typewriters at 
present in use, which was applied for in 1879 but not 
granted till 1897. A patent has seventeen years to run 
from the date of grant, and the practical effect of the 
course stated above is to delay the grant of the patent 
until the development of the art has made the article a 
universal necessity, when the issue of the patent puts all 
makers, users and sellers of the same under contribution. 
In a case brought finally before the United States Supreme 
Court to set aside one of Berliner's patents, the patent 
was not issued till thirteen years after the filing of the ap- 
plication. The court said: "Why should the validity of 
the grant which that tribunal [the Patent Office] finally 
makes, depend in any degree upon the number of times he 
has repeated his application?" and also that the appli- 
cant " may insist upon all the advantages and benefits 
which the statute promises to him." 



34 



on 



When the case has been allowed, the Government calls 
for the payment of the final fee of $20 in order that the 
patent may issue (p. 38) ; or, if the case has been finally 
rejected, the applicant's recourse is by appeal (p. 37.) 

INTERFERENCES* 

An interference is a proceeding instituted in the Patent 
Office for the purpose of determining the question of prior- 
ity of invention, and that question alone, between two or 
more parties (applicants, or an applicant and a patentee) 
claiming substantially the same patentable invention. 
The fact that one of the parties has already obtained a 
patent will not prevent an interference, for, although the 
Commissioner has no power to cancel a patent, he may 
grant another patent for the same invention to a person 
who proves to be the prior inventor, and leave the two 
patentees to settle their differences before the courts, 
which may declare either of the patents void in whole or 
in part. 

When the interference has been " declared,' ' that is, in- 
stituted, the Patent Office requires each party to file a 
"preliminary statement" setting forth, under oath, the 
date of the original conception of the invention claimed, 
the date upon which a drawing (if any) of the invention 
was made, the date upon which the model was made, the 
date of disclosure of the invention to others, the date of re- 
duction to practice, and a statement of the extent to which 
the invention has been used. W T hen the invention was 
made abroad, the preliminary statement must set forth 
other facts. A party is bound by the dates alleged in his 
preliminary statement, and cannot prove a date earlier 
than the one set up therein ; for example, suppose the date 
of conception is alleged in the statement as August, 1895. 
The applicant will not be allowed to prove that he con- 
ceived it earlier than that, even though he may have been 
mistaken in setting up the date of August, 1895. The Pat- 
ent Office does not allow a change in the preliminary state- 
ment except on a very clear showing by affidavits. The 
importance of keeping a record of experiments, and also 
the subjects of the experiments, as outlined on page 7, 

85 



will now be apparent. The preliminary statements are, 
kept secret by the Patent Office till all have been filed. 
The parties can then inspect them. The statements are in 
effect the " pleadings" of the interference, and, as the 
dates alleged should obviously be as early as possible, too 
great care cannot be exercised in their preparation. 

The party who has filed his application first is pre- 
sumed to have been the first inventor, and the later appli- 
cant (the ''junior party ") is therefore put in as the plaintiff 
in the case, the earlier applicant (the " senior party") being 
in the position of a defendant. In the absence of any 
other proof the patent would be granted to the one who 
first filed his application, and the junior party must there- 
fore, to obtain the patent, prove that he was the first in- 
ventor, and this proof must be beyond a reasonable doubt. 
This is another reason why an inventor should file his ap- 
plication as soon as possible. 

The question of conception and reduction to practice 
has been discussed heretofore (p. 6). A thorough under- 
standing of the principles underlying each is of the greatest 
importance in the proper conduct of an interference. 

After the preliminary statements have been filed and 
approved the Patent Office sets the times for taking testi- 
mony, the junior party first, then the senior party in 
defense, and then the junior party in rebuttal. The testi- 
mony is usually taken in writing on a typewriter, and each 
witness is examined and cross-examined as in a court of 
law. Witnesses may be subpoenaed to attend such ex- 
aminations. It is here that a record of experiments, such 
as outlined on page 7, is a great help and perhaps wins 
the case, for the actual thing which was made, together 
with a written and witnessed record of the making and of 
the date, is much more convincing to a court than a mere 
statement of the facts from memory, which latter may or 
may not be exact. 

When the testimony is all in, the case is argued before 
the Examiner of Interferences in the Patent Office, who 
renders his decision awarding priority of invention to one 
or the other of the parties. This decision is not final, as 
several appeals (see p. 37) may be taken before a final 
decision is rendered. 



36 



APPEALS. 

A rule of the Patent Office provides that " every appli- 
cant for a patent, any of the claims of whose application 
have been twice rejected for the same reasons, upon 
grounds involving the merits of the invention, such as lack 
of invention, novelty, or utility, or on the ground of aban- 
donment, public use or sale, inoperativeness of invention, 
aggregation of elements, incomplete combination of ele- 
ments * * * may, upon payment of a fee of $10, appeal 
from the decision of the Primary Examiner to the Ex- 
aminers in Chief." The Examiners in Chief are a board of 
three judges who decide questions appealed on the merits 
from the Primary Examiners. For example, if the Exam- 
iner rejects the claims because they are anticipated by cer- 
tain references, and on the next action rejects them for the 
same reason, the appeal can be taken. Upon questions not 
affecting the merits, which have been twice decided by the 
Examiner adversely to the applicant for the same reason, a 
petition may be taken to the Commissioner of Patents, 
whose decision upon such point is final. For such a petition 
the Patent Office requires no fee. An example of such a peti- 
tion would be where the Examiner had twice required the 
applicant to show another figure in his drawings. The 
applicant's attorney appears before the appellate tribunal, 
whichever it may be, and argues the case, or the case may 
be submitted on a brief without argument. From an adverse 
decision of the Board of Examiners in Chief an applicant may 
appeal directly to the Commissioner. For this the Patent 
Office requires a fee of $20. 

An appeal from the Commissioner's adverse decision, on 
a question appealed to him from the Board of Examiners 
in Chief, may be taken to the Court of Appeals of the Dis- 
trict of Columbia within forty days. No oral testimony is 
taken, but the case is decided on the record as sent up from 
the Patent Office. The docket fee for this appeal is $15. 
If the decision of the Court of Appeals of the District of 
Columbia is adverse, a bill in equity may be filed to compel 
the grant of a patent. This is the final resort. 

Except in an interference case, if the applicant wins any 
one of his successive appeals the point appealed is decided 
in his favor, for neither the Examiner nor the Patent Office 

37 



has the right to appeal from a decision in favor of the 
applicant. In the case of an interference there are two 
parties, each of whom is endeavoring to prove priority of 
invention and obtain the patent, and a defeated party may 
therefore appeal from the Examiner of Interferences to the 
Board, to the Commissioner, and to the Court of Appeals 
of the District of Columbia, and may bring a bill in equity 
to compel the grant of a patent to him. Appeals in 
infringement suits are discussed hereafter (p. 48). 



ALLOWANCE AND ISSUE, 

After all questions, both formal and on the merits, have 
been decided, and the Patent Office considers the patent is 
ready to issue, the application is formally " allowed," and 
a notice of allowance is sent to the applicant calling 
for the paj^ment of the u final fee " of $20. This must be 
paid within six months of the date of the notice, or the ap- 
plication becomes " forfeited," but can be renewed by the 
payment of a further fee. If, however, the final fee is paid 
within the six months, the patent is granted — usually 
about three weeks from the date of payment. 

The term of a United States patent is seventeen years. 
An inventor cannot recover against infringers until his 
patent is granted, as before that, he has no exclusive 
M right " to his invention. 

The Government does not guarantee the validity of a 
patent, nor that the matter patented in it does not infringe 
one or more prior patents. From the number of inquiries 
as to these points which the writer has received, it would 
appear that a great number of inventors and manufacturers 
do not understand why such guarantees cannot be given. 
The Government cannot guarantee the validity of a patent, 
in the first place because the Examiners in the Patent Office 
cannot know of many circumstances which might make the 
patent invalid, for example, a public use in some remote 
part of the United States or a prior invention, and in the 
second place the Examiners are not infallible and may 
not have discovered a prior patent or publication which 
disclosed the matter patented. It cannot guarantee that 
the matter claimed in the patent does not infringe one or 

28 



BMHI 



more prior patents, because improvements on an invention 
are patentable, and an improvement upon an existing 
patented device or process often includes the invention pre- 
viously patented, and the improved device or process is 
therefore generally an infringement of the prior patent. 

There are no taxes to be paid on the patent, nor must 
it be " worked" after the grant in order to keep the same 
alive, as is necessary in most foreign countries (see p. 67). 



REISSUES* 

Section 4916 R. S. provides in part that " Whenever any 
patent is inoperative or invalid, by reason of a defective or 
insufficient specification, or by reason of the patentee 
claiming as his own invention or discovery more than he 
had a right to claim as new, if the error has arisen by 
inadvertence, accident or mistake, and without any fraudu- 
lent or deceptive intention, the Commissioner shall, on the 
surrender of such patent and the payment of the duty 
required by law, cause a new patent for the same invention 
* * * to be issued * * * for the unexpired part of 
the term of the original patent." A reissue is in the nature 
of an amendment of an imperfect existing patent so that it 
will disclose and protect the subject-matter which the pat- 
entee intended and attempted to protect, when the imperfec- 
tion arises from inadvertence, accident or mistake, and with- 
out fraud or deceptive intent. It does not, for all purposes, 
have the effect of a grant of an entirely new patent. 
Matter not disclosed in the original cannot be included in 
the reissue application, nor in the case of a machine patent 
can the model or drawings be amended except each by the 
other. If the original application did not disclose certain 
material parts of the invention, it is not a ground for 
reissue ; nor if the patentee merely claimed less than he was 
entitled to. The defects which can be remedied are princi- 
pally defects of statement or description of the invention. 
A claim can seldom be broadened. The record of the 
original application must show that the applicant at- 
tempted to describe and claim it. If this attempt cannot 
be shown there is no ground for a valid reissue. The mere 
fact that an applicant showed matter in his original ap- 

39 



plication which he might have claimed but did not, is not 
sufficient. In determining his former purpose all the papers, 
including the amendments, may be examined. Matter 
described in the original patent as an essential part of the 
invention, cannot be omitted in the reissue. A claim may, in 
some cases, be broadened by reissue, but this is looked upon 
by the courts with suspicion, but a claim legally abandoned 
in the original application cannot be reinserted in the 
reissue. The reissue application must be sworn to by the 
inventor if living, and must be accompanied by a surrender 
of the original patent. It will be returned if the reissue is 
refused. 

A reissue should be applied for as soon as the defect in 
the patent is discovered. Delay may be construed by the 
courts as abandonment. A delay of over two years has 
had this effect, and under the present statute (p. 34) one 
year's delay may be so construed. 



DISCLAIMER, 

Section 4917 R. S. provides in part that " Whenever 
through inadvertence, accident or mistake, and without any 
fraudulent or deceptive intention, a patentee has claimed 
more than that of which he was the original or first in- 
ventor or discoverer, * * * any such patentee, his heirs or 
assigns, whether of the whole or any sectional interest there- 
in, may * * * make disclaimer of such parts of the thing 
patented as he shall not choose to claim or hold * * *. 
Such disclaimer shall be in writing, attested by one or more 
witnesses, and recorded in the Patent Office ; and it shall 
thereafter be considered as part of the original specification 
to the extent of the interest possessed by the claimant and 
by those claiming under him after the record thereof." Also 
§ 4922 R. S. in part, " But in every such [infringe- 
ment] case in which a judgment or decree shall be rendered 
for the plaintiff, no costs shall be recovered unless the 
proper disclaimer has been entered at the Patent Office be- 
fore the commencement of the suit. 1 ' 

A disclaimer, when needed, should be filed without 
delay. The usual purpose of a disclaimer is to cancel a 

40 



claim or claims which are anticipated, and therefore ren- 
dered void, by the prior act. The subject is not of sufficient 
importance to discuss here at length. 



TRANSFERS OF INTEREST. 

An Assignment is a transfer of the entire interest in an 
invention, or an undivided part thereof, as to the entire 
United States. It may be made before or after the inven- 
tion has been patented. 

A Grant is the transfer of the exclusive right to make, 
use and sell under the patent within some specified part 
only of the United States, for example, in a single State. 

The assignor of the entire interest cannot practice the 
invention in the United States, nor the grantor within the 
section granted, without the consent of the assignee or 
grantee. A patent is personal property. An assignment, 
grant, license or other transfer of any interest in an in- 
vention, should for protection be in writing. A transfer of 
an interest in a patent need not be sealed or witnessed 
to be valid. It should, however, be witnessed, as a pre- 
caution. A transfer of the right to make alone, or to make 
and sell only, or to make, or use, or sell, is neither an 
assignment nor a grant, but is a license (p. 42). An 
assignment of the entire invention or grant transfers the 
exclusive interest in the invention, — in case of a grant 
it is for only a part of the United States, the right to 
the rest remaining in the grantor. An assignee or grantee 
can grant licenses, the latter only to the extent of his terri- 
tory. 

A patent may be transferred by will, and is held by the 
testator's executors or administrators in trust for the heirs. 
An interest in a patent may be mortgaged. A contract for 
the transfer of a specified future invention is not an assign- 
ment, but is a contract under which the courts will compel 
the assignment to be made. An assignment transfers the 
invention referred to therein, but not necessarily any im- 
provements thereon. If the assignment contains an agree- 
ment to transfer future improvements which the as- 
signor may make, the assignee takes an equitable title to 

41 



such improvements, on that particular invention, when 
made. But an agreement to transfer "all future inven- 
tions" has been held to be too broad and indefinite. An 
assignment of any undivided part of the patent makes the 
assignee and assignor joint owners, and either can practice 
the invention without consent of the other. A single claim 
of a patent cannot be assigned without the rest. A grant 
or assignment may be upon conditions either subsequent 
or precedent. 

A License has been defined to be any transfer " which 
does not convey to the assignee the entire and unqualified 
monopoly which the patentee holds in the territory speci- 
fied, or an undivided interest in the entire monopoly." If 
any part of the right in the specified territory remains in 
the transferor alone, it is a license. Thus the transfer of 
the right to make and sell is a license, because the right to 
use was not conveyed. A transfer of the exclusive right to 
make, use and sell, however, conveys the entire interest, 
and is construed to be an assignment. A license to make 
does not necessarily also convey the right to sell. A licensee 
cannot license others, unless specially permitted by the 
licensor. A license is not revocable by the licensor unless 
so specified. A license may be verbal, but should be in 
writing. A license may also be implied from the conduct of 
the owner. This is often seen in the case of employer and 
employee. An employer has no right to the inventions of 
his employee merely because of the relations between the 
two, but if the employer hires a workman to invent im- 
provements on a machine, he thereby becomes equitably 
entitled to such inventions. Even if there is no express 
contract between them as to inventions, if the employee, 
using the time, tools and materials of the employer, makes 
and patents an invention and allows the employer to use 
it practically in his business, the law implies a license to 
the employer. This question often arises where the em- 
ployee then leaves the employ, and afterwards strives to 
restrain his former employer from practicing the invention. 
A person who purchases of the inventor, or, with his 
knowledge and consent, constructs any newly invented or 
discovered machine, or other patentable article, prior to 
the inventor's application for a patent on the same, or who 

42 



nsa 



sells or uses one so constructed, has the right to use and 
sell to others to be used, the specific thing so made or pur- 
chased, without liability therefor. 

Recording.— An assignment or grant of a patent is void, 
as against any subsequent purchaser or mortgagee who 
has paid a valuable consideration therefor and who had 
no notice of the prior conveyance, if said assignment or 
grant has not been recorded in the Patent Office within three 
months from the date of execution thereof. Record in the 
Patent Office within said three months is constructive 
notice to all the world of the transfer, and no patent or in- 
terest should be bought without having the title, as there 
disclosed, examined by an attorney to find where the 
title lies. This may also disclose the fact that there are 
licenses outstanding. The law does not require a license to 
be recorded, and if recorded it has been held to be not a con- 
structive notice, but it is often wise to record a license, as 
thereby it may come to the actual notice of a purchaser 
of the patent. 

An assignment or other conveyance of a patent should 
always be acknowledged before, for convenience, a notary 
public, or a consular officer if abroad, who should always 
attach his seal, as the certificate is prima facie evidence of 
execution. 



INFRINGEMENTS. 

A patent confers upon the patentee the exclusive right 
to make, use and sell the patented invention throughout 
the United States and Territories. The manufacture, use 
or sale of the patented invention within those limits, un- 
authorized by the owner of the patent right for that 
locality, is, therefore, an infringement. The intent with 
which the act was committed does not, in general, affect 
the question, although it is important in the question of 
contributor}" infringement (p. 44) and damages (p. 48). A 
patent is an entirety, and an infringement of only one claim 
is an infringement of the patent. An assignor of the entire 
interest becomes an infringer by the manufacture, use or 

43 



sale of the invention by him. A grantor infringes his 
grantee's rights by the same acts in the territory granted. 
Similarly the grantee is an infringer of the grantor's 
rights by such acts outside the territory granted. A 
licensee, however, cannot, as a rule, sue for infringement 
without joining his licensor. A licensee may become an 
infringer by acts not included in the scope of his license, 
for example, a license to sell does not include the right to 
make. The United States has no right to infringe a patent, 
nor has a State or city government. A claim for a com- 
bination is not infringed by the making, use or sale of an 
element alone of that combination, except in the case of a 
" contributory infringement." 

Where part of a patented device is made by one person 
and part by another, with the intent that the two parts 
shall be joined so as to constitute an infringement, each 
party contributes to the ultimate infringement, although 
the particular part which he makes may not by itself be an 
infringement, and is therefore held to be constructively an 
infringer of the patent. This contributory infringement 
often arises where a person makes or sells parts of a 
patented machine or other article. The intent must be 
present, to constitute a contributory infringement, for the 
mere manufacture of an unpatented article, which may in 
some way be used to contribute to an infringement, but 
without the legal intent that it shall be so used, is not 
illegal. The circumstances of each case determine whether 
or not there is contributory infringement. 

If a person has a patented machine which he has the 
right to use, he also has the right to keep the same in an 
operative condition by repairs which do not amount to a 
reconstruction of the machine. If a part becomes worn out 
or broken, he may, usually, make and replace that part, 
but he cannot make a substantially new machine. The 
line dividing legitimate repair and illegal reconstruction 
cannot be well defined, and each case must be decided in 
view of its particular circumstances. 

The particular invention claimed must be made, used or 
sold to constitute an infringement. Every element named 
in the claim must be present. This does not mean that the 
identical device illustrated in the patent drawings must be 
employed. The substitution of equivalents for certain 

44 



elements in a combination or process claim may be an 
infringement — such as a wedge for a screw, a weight for a 
spring, etc. An equivalent has been defined as an element 
which 4< accomplishes substantially the same result in sub- 
stantially the same way, and was known as a proper 
substitute at the time the invention was made." 

A device which seems to answer every requirement of a 
claim may not be an infringement thereof. The claim 
must be construed in the light of the prior act, the wording 
of the specification, and the actions in the Patent Office 
before the patent was granted, and may thus be given a 
narrow interpretation when it seems to be broad. The 
amendments made in the Patent Office may cut down the 
scope of a claim (see p. 33) . 

An " infringement search " is a search through the United 
States patents in the Patent Office to find whether a certain 
invention infringes any of said patents. It is oftenest made 
where a client wishes to manufacture that invention but 
wants to avoid a suit for infringement. The search may 
show that the invention does not infringe any prior patent, 
and the manufacturer may therefore go ahead without the 
fear of a successful suit against him. If a patent is found 
which claims the invention, the attorney may be able to 
instruct the manufacturer how to slightly change his de- 
vice so that he will not infringe, or, if the patent cannot be 
avoided, the manufacturer may be able to buy the patent, 
or obtain a license under the same. In either case the 
client will probably be saved the expense and annoyance of 
a suit for infringement. Even if he is compelled to give up 
the proposed manufacture, on account of the threatening 
patent, he is saved the expense of installing new machinery, 
besides the expense of a suit. The writer recently made a 
validity search on a process of paper manufacture and 
found three threatening patents. Two of these, on investi- 
gation of the prior art and the actions in the Patent Office, 
were decided to be too narrow to include the process. The 
third patent had one claim, out of a dozen or more, which 
might be held to cover the process. An easy way of avoid- 
ing the claim was pointed out, and the inventor is now, 
after having obtained a patent on his process, carrying on 
the process in comparative security. 

The question why the Government grants a patent on 

45 



an invention which infringes another patent has been ex- 
plained on page 38. 

No question of infringement should be decided without 
the advice of competent counsel, as it is one of the most 
complicated questions in the Patent Law, and the correct 
answer depends on such a variety of considerations that it 
cannot be settled with any degree of certainty without ex- 
pert legal knowledge. 

PATENT SUITS* 

Jurisdiction in patent and copyright suits is given by 
the Constitution to the United States Courts. A suit for 
the recovery of royalties on a license, or for the enforce- 
ment of a contract in regard to a patent, is not a patent 
suit, such as by itself gives jurisdiction to the United States 
Courts. Such suits may usually be brought in the State 
courts. The Circuit Courts of the United States have orig- 
inal jurisdiction over patent suits. Suits for infringement 
may be either at law or in equity. If at law, damages and 
profits for past infringements can be recovered, but an in- 
junction cannot be granted. As an injunction is usually 
sought, it is customary to bring the suit on the equity side, 
as damages and profits can be awarded, besides injunctions. 
No infringement can be committed before the patent is 
granted, nor, where suit is brought on a reissue, before the 
re-issue is granted. As a rule, a suit for infringement can- 
not be maintained for acts done after the patent has 
expired, but the sale, after the expiration of a patent, of 
infringing goods made before that time, is illegal and can 
be restrained. A single suit cannot be properly brought on 
two patents, unless the inventions are capable of conjoint 
use and have been so used. 

As soon as the owner of a patent learns that his patent 
is being infringed, he should notify the infringer in writing 
to desist. This, and particularly the reply to such a letter, 
as well as all subsequent actions, should be made only af- 
ter advice by a competent attorney, as the wording of them 
is often of the greatest importance. In preparing the de- 
fense to an infringement suit, the record of the title and of 
the actions in the Patent Office are carefully examined, and 
a " validity search" through the records of patents and 

46 



publications, both foreign and domestic, in the Paten 
Office should be made by the attorney, to find whether the 
patent has been in fact properly granted. Such a search 
should always be made before the defense is prepared, as 
patents or publications are often discovered which antici- 
pate all or some of the claims, or cut down the scope of 
the claims so that the defendant can escape infringement. 
Such a search also discloses the " state of the art," that is, 
what prior inventors have done in that line of invention, 
and therefore gives the court an opportunity to see just 
how great or how small an advance over what was old 
the patentee has made. Such a search should never be 
omitted, either by the detendant in a suit, or by a person 
who contemplates purchasing an interest in a patent. In 
either case the search may show that the patent is invalid, 
and therefore worthless, or so restricted in scope as to be 
practically of no value. This is also true where a manu- 
facturer wishes to make a patented invention. A validity 
search may show that the patent is invalid and that the 
public has, therefore, the right to practice the in- 
vention. The other defenses, such as public use or sale, title, 
abandonment, estoppel, constructive license, etc., are investi- 
gated, and, with the anticipations found by the validity 
search, set up in the answer, which must be filed generally 
in about a month after the filing of the bill of complaint. 

A " preliminary injunction " is often sought by the com- 
plainant. This is for the purpose of restraining the defend- 
ant from infringing the patent till the decision of the 
suit. If obtained, it shuts up the defendant's business to 
the extent of the patented invention, for he cannot make, 
use or sell the same while the injunction is in force. The 
suit may not be decided for months, often for a year or 
more, and during this time the trade must buy elsewhere, 
usually of the complainant. A preliminary injunction is an 
extraordinary relief, and is not granted unless the com- 
plainant proves with certainty that he has the title to the 
patent and that the defendant has infringed, and he must 
also show that the patent is presumably valid. If there 
is doubt on any of these points, the injunction should be 
refused. The decree granting or refusing a preliminary 
injunction may be appealed from to the Court of Appeals 
of the proper circuit. 

47 



The evidence in a patent suit is not, usually, taken 
orally before the court, but before a master appointed by 
the court, and usually in the attorney's office. Witnesses 
can be subpoenaed to attend. Expert testimony is neces- 
sary in most suits. When the testimony has all been taken, 
it is printed, and the case argued before the court. If the 
decision is for the complainant, the decree usually sustains 
the validity of the patent, adjudges that the defendant has 
infringed, and awards a perpetual injunction against him. 
If damages or profits, or both, are prayed for in the bill of 
complaint, an accounting may be had before a master, who 
reports to the court the amount of damages and profits 
found. The court then makes a final decree, which may 
include either or both besides the injunction. The statutes 
empower the courts to increase the amount of damages 
found to any sum not exceeding three times the amount of 
such actual damages, if the circumstances warrant such ac- 
tion. These are called "punitive damages," and are sometimes 
awarded to punish the defendant in a case of willful and 
flagrant infringement. If the decision is for the defendant, 
the bill is dismissed. Costs are awarded in the discretion 
of the court. 

From the final decree the defeated party may appeal to 
the Court of Appeals of the circuit. Appeals cannot, under 
the present law, be taken as a right to the Supreme Court, 
but cases may be taken there under some circumstances. 

A patentee should not delay in bringing suit against 
an infringer. The delay of several years has, in a number 
of cases, been held to be an abandonment of the patentee's 
right to sue that infringer. The statutes also provide that 
in any suit or action brought for the infringement of any 
patent there shall be no recovery of profits or damages for 
any infringement committed more than six years before the 
filing of the bill of complaint or the issuing of the writ in 
such suit or action. Long delay is almost invariably a 
cause for refusing to grant a preliminary injunction. 

Interfering Patents. — Where two patents interfere, any 
person interested in any one of them, or in the working of 
the invention claimed under either of them, may have relief 
against the interfering patentee by a suit in equity ; and 
the court may adjudge either of the patents void in whole 

48 



or in part. A suit of this character should not be con- 
founded with an " interference " in the Patent Office in 
which at least one application must be involved (see p. 35). 
This "interference" between to patents has been held to 
mean the same as in the proceeding in the Patent Office. 
The cases seem to hold that two patents do not "inter- 
fere," with the meaning intended by the statute, merely 
because one infringes the other. Just what the limits are 
has not yet been satisfactorily determined by the courts. 



MARKING PATENTED ARTICLES. 

Section 4900 R. S. provides that : " It shall be the duty 
of all patentees, and their assigns and legal representatives, 
and of all persons making or vending any patented article 
for or under them, to give sufficient notice to the public 
that the same is patented ; either by fixing thereon the 
word "patented," together with the day and year the 
patent was granted ; or, when from the character of the 
article this cannot be done, by fixing to it, or to the pack- 
age wherein one or more of them is enclosed, a label con- 
taining the like notice ; and in any suit for infringement 
by the party failing so to mark, no damages shall be re- 
covered by the plaintiff except on proof that the defendant 
was duly notified of the infringement, and continued, after 
such notice, to make, use or vend the article so patented." 

The failure to give the proper notice that the article is 
patented may prevent the recovery of damages, but does 
not, of itself, prevent the grant of a preliminary, nor of a 
permanent, injunction. 

Fraudulent Marking. — "Every person who, in any 
manner, marks upon anything made, used or sold by him 
for which he has not obtained a patent, the name or any 
imitation of the name of any person who has obtained a 
patent therefor, without the consent of such patentee, or 
his assigns or legal representatives ; or who, in any 
manner, marks upon or affixes to any such patented article 
the word 'patent' or * patentee,' or the words 'letters 
patent,' or any word of like import, with intent to imitate 
or counterfeit the mark or device of the patentee, without 

49 



having the license or consent of such patentee or his assigns 
or legal representatives ; or who, in any manner, marks 
upon, or affixes to any unpatented article the word 'patent' 
or any word importing that the same is patented, for the 
purpose of deceiving the public, shall be liable, for every 
such offense, to a penalty of not less than one hundred 
dollars, with costs ; one-half of said penalty to the person 
who shall sue for the same, and the other to the use of the 
United States to be recovered by suit in any district court 
of the United States within whose jurisdiction such offense 
may have been committed. " (Sec. 4901 R. S.) For the 
requirements as to marking articles made abroad, see p. 62. 

DESIGNS. 

Section 4929 R. S. provides in part that : " Any person 
who, by his own industry, genius, efforts, and expense, has 
invented and produced any new and original design * * 
* or any new, useful and original shape or configuration 
of any article of manufacture, the same not having been 
known or used by others before his invention or production 
thereof, or patented or described in any printed publication, 
may * * * obtain a patent therefor." Nearly all the 
prerequisites as to the patentability of inventions, such as 
absence of two years public use, prior invention, or aban- 
donment, etc., apply also to designs. A reissue (p. 39) of a 
design patent may be had, and a caveat (p. 25) and dis- 
claimer (p. 40) can be filed. 

A design is intended to please the eye of the observer, 
instead of being a shape which is merely better mechanic- 
ally. It may consist of an entire article, as a new design 
for a stove, or of a part thereof, as a design for a handle, 
or it may be purely for decorative effect, as a peculiar or- 
namentation of the door of the stove. It must be 
useful in the sense that it is not immoral or necessarily 
harmful. The Supreme Court has said that " The Acts of 
Congress which authorize the grant of patents for designs 
were plainly intended to give encouragement to the decora- 
tive arts. They contemplate not so much utility as ap- 
pearance.' ' There must be invention displayed in the pro- 
duction of the design ; mere mechanical skill is insufficient. 

so 



A prior mechanical patent on a device does not necessarily 
prevent the grant to the same person of a patent on a 
design shown therein. 

To constitute a new design, it must appear to be such to 
the eye of the ordinary observer, not necessarily to the eye 
of the expert. The mechanical effects are to be disregarded 
entirely in judging of the similarity or difference be- 
tween designs. It is the appearance to the eye of the 
ordinary observer which is the criterion. So, too, in the 
case of an alleged infringement of a design, patent, the 
mechanical results which two devices produce may be pre- 
cisely the same and they may operate in precisely the 
same way, and yet be different designs, but if an ordinary 
observer, using ordinary care, would not mistake one 
design for the other by their appearance, they are different 
designs in the eye of the Patent Law. 

Any person who unlawfully and knowingly manufac- 
tures for sale, or sells or exposes for sale, any article of the 
patented design, is liable to the extent of $250 ; and in case 
the total profit to him from the infringement exceeded that 
amount, he is liable for the excess also, which may be re- 
covered by the owner of the patent. Damages and injunc- 
tions may also be awarded. 

Design patents are granted for 3M>, 7 or 14 years, at the 
option of the applicant, the Government fee being $10, $15 
or $30, respectively. 

In general, the practice as to design patents follows 
that as to mechanical patents, and nearly all the regula- 
tions and provisions which apply to obtaining or protect- 
ing patents for inventions apply also to patents for designs. 

COPYRIGHTS* 

An author, resident in this country, has a property in 
his intellectual production before it has been published, in- 
dependent of any right conferred by statute. It is, in effect, 
not the right to make copies, but the right to first publish ; 
and he can, without obtaining a copyright, restrain others 
from, and obtain damages for, copying or publishing his 
work before he himself publishes it, without his permis- 
sion. This right continues until the work is published by 

51 



him, and then ceases. The necessity for enforcing this non- 
statutory right seldom arises, but may be invoked to pre- 
vent the unlawful piracy of his work before he obtains a 
copyright. Suits on this right must, usually, be brought 
in the State courts. The right of copying, /. e., the " copy- 
right/ J conferred by statute is of more practical importance. 

Statutory Copyright. — The grant of copyright is 
authorized by the same section of the Constitution as 
authorizes the grant of a patent for an invention, namely 
Art. I, § 8, which says that " The Congress shall have 
power * * * to promote the progress of science and 
useful arts by securing for limited times to authors and 
inventors the exclusive right to their respective writings 
and discoveries." Congress has delegated the power to 
grant copyrights to the Librarian of Congress. 

What may be copyrighted. — The author, inventor, de- 
signer or proprietor of any book, map, chart or musical 
composition, engraving, cut, print or photograph or nega- 
tive thereof, or of a painting, drawing, chromo, statute, 
statuary, and of models or designs intended to be perfected 
as works of the fine arts, and the executors, administrators, 
or assigns of any such person, may obtain a copyright 
giving him the sole liberty of printing, reprinting, publish- 
ing, completing, copying, executing, finishing and vending 
the same ; and, in the case of a musical composition, of 
publicly performing or representing it, or causing it to be 
performed or represented by others. And authors or their 
assigns may obtain the exclusive right to dramatize or 
translate any of their works, for which copyright has been 
obtained under the laws of the United States. A foreigner 
may obtain a copyright when his foreign state or nation 
permits reciprocal rights to citizens of the United States. 
A citizen of the United States may obtain a copyright in 
nearly all of the European countries on substantially the 
same footing as citizens of those countries. In many other 
countries he may also obtain a copyright, but under re- 
strictions. A pamphlet, or even a single page or article, 
has been held to be a "book." A circus poster has been 
decided to be not a " work of the fine arts " such as entitles 
the designer or owner to a copyright. 

52 



The above words " engraving," "cut" and "print" are 
applied only to pictorial illustrations or works connected 
with the fine arts. There must be some intellectual effort 
spent on the subject to make it copyrightable. Prints or 
labels designed to be used for any other articles of manu- 
facture cannot be entered under the copyright law, but 
may be registered in the Patent Office (see p. 82) . 

Term. — Copyrights are granted for the term of twenty- 
eight years. The author, inventor or designer, if living, or 
his widow or children, if he is dead, may have the copy- 
right continued for a further period of fourteen years. 

Procedure. — To obtain a valid copyright under the stat- 
utes a person must, on or before the day of publication, in 
this or in any foreign country, deliver at the office of the 
Librarian of Congress, or deposit in the mail within the 
United States, addressed to the Librarian of Congress at 
Washington, a printed copy of the title of the book, map, 
chart, dramatic or musical composition, engraving, cut, 
print, photograph or chromo, or a description of the 
painting, drawing, statue, statuary, or a model or design 
for a work of the fine arts for which he desires a copyright. 
He must also, not later than the day of the publication 
thereof in this or in any foreign country, deliver at the office 
of the said Librarian, or similarly deposit in the mail, two 
copies of such book, map, chart, dramatic or musical 
composition, engraving, chromo, print or photograph, or, 
in case of a painting, drawing, statue, statuary, model or 
design for a work of the fine arts, a photograph of the 
same. In the case of a book, photograph, chromo or 
lithograph, the two copies required as above must have 
been printed from type set within the limits of the United 
States, or from plates made therefrom, or from negatives 
or drawings on stone made within the limits of the United 
States, or from transfers therefrom. The importation of any 
book, chromo, lithograph or photograph, so copyrighted 
and not produced as above specified, is forbidden while the 
copyright is in force, except in a few cases. 

A copyright of a book secures its contents, including 
prints, engravings, etc. A "publication," in the sense 
above meant, need not necessarily be a distribution or sale 

53 



of copies. It has been held that an offering of the book to 
public notice, or rendering it accessible to public scrutiny, is 
a publication. It has also been decided that an exhibition 
of a painting to which the public could come was a publi- 
cation of the painting. It would still be so, even though 
an admission fee were charged. It has been held that a mere 
advertisement, having no intellectual quality, is not copy- 
rightable. It has been held by a Court of Appeals that the 
" description " which must be filed in certain cases, as 
above specified, is not contained in the " photograph" 
which must also be filed. A verbal description of the sub- 
ect is required. A copy of each subsequent edition of a 
book must also be filed, when substantial changes are made. 
Each volume, of a book in two or more volumes, and each 
number of a periodical, is an independent publication, and 
subject to copyright as such. Sending the printed title of a 
book or magazine does not copyright the title. It is the 
book or magazine itself which is copyrighted, and sending 
the title merely is not sufficient. A failure on the part of 
the proprietor of a copyright to deliver, or deposit in the 
mail, either of the published copies, or description or photo- 
graph above required, makes the proprietor liable to a 
penalty of $25. 

No person can maintain an action for infringement of 
his copyright unless he gives notice thereof by inserting in 
in the several copies on the title page, or the page imme- 
diately following, if it is a book ; or, if a map, chart, 
musical composition, print, cut, engraving, photograph, 
painting, drawing, chromo, statue, statuary, or model or 
design intended to be perfected and completed as a work of 
the fine arts, by inscribing upon some visible portion 
thereof, or of the substance on which the same is mounted 

" Entered according to Act of Congress in the year by 

A. B., in the Office of the Librarian of Congress at Wash- 
ington"; or, if preferred, the word " Copyright," with the 
year of entry of the copyright and the name of the party 
by whom the copyright was obtained, thus " Copyright, 
1900, by John Smith." The Supreme Court has held this 
to be a condition precedent to a valid copyright. The 
" several" copies includes the original. The purpose of 
this requirement of marking is to give notice of the copy- 
right to the public, and the courts have not required 

54 



the words of the statute to be strictly followed, providing 
the essential information is given. For example, " Copy- 
right '93 by Bolles, Brooklyn," was decided by the Supreme 
Court to be a sufficient compliance. It has also been held 
that additional statements are mere surplusage so long as 
the essentials of the notice are given. In the case of 
moulded decorative articles, tiles, placques, or articles of 
pottery or metal, the above notice may be placed on the 
back or bottom. 

A person who impresses such notice falsely upon an 
article for which he has no cop3 r right, or knowingly issues 
or sells or imports the same, is liable to a penalty of $100. 

Infringement. — If, after the title of a book has been 
recorded, and the two copies deposited as heretofore pro- 
vided, a person unlawfully prints, publishes, dramatizes, 
translates or imports, or, knowing the same to be so 
printed, published, dramatized, translated or imported, 
sells or exposes for sale any copy of such book, he is liable 
to forfeit every copy to the proprietor of the copyright, 
besides damages. If the consent of the proprietor is first 
obtained in writing, signed in the presence of two witnesses, 
the liability does not attach. A cut in a book may be a 
subject of copyright distinct from the book itself. 

If, after the record of the title of a map, chart, dramatic 
or musical composition, print, cut, engraving or photo- 
graph or chromo, or the description of a painting, draw- 
ing, statue, statuar}', or model or design intended to be 
perfected and executed as a work of the fine arts, a person, 
without the consent of the proprietor of the copyright first 
obtained in writing, signed as above stated, engraves, 
etches, works, copies, prints, publishes, dramatizes, trans- 
lates or imports, either in whole or in part, or by varying 
the main design, with intent to evade the law, or knowing 
the same to be so printed, published, dramatized, translated 
or imported, sells or exposes for sale any copy of any of the 
above articles, he is liable to forfeit to the proprietor all the 
plates on which the same are copied, and every sheet thereof, 
either copied or printed, besides one dollar for every sheet 
found actually in the possession of the infringer, whether 
those sheets are printing, printed, copied, published, im- 
ported or exposed for sale. A corporation is a " person." 

55 



It has been held that a book is not included in the above. 
Incase of the infringement, by any of the above acts, of a 
copyright for a painting, statue or statuary, the infringer 
is liable to the forfeiture of ten dollars for every copy in his 
possession, or by him sold or exposed for sale ; provided 
that in case of any such infringement of the copyright oi a 
photograph made from any object not a work of the fine 
arts the sum recovered shall be not less than $100, nor more 
than $5,000 ; and provided, further, that in case of any such 
infringement of the copyright of a painting, drawing, 
statue, engraving, etching, print or model or design for a 
work of the fine arts, the sum to be recovered shall be not 
less than $250, and not more than $10,000. One half the 
above penalties goes to the proprietor and the other half to 
the United States. 

Any person publicly performing or representing any copy- 
righted dramatic or musical composition without permis- 
sion is liable in damages, and such damages are to be in 
every case not less than $100 for the first, and $50 for 
every subsequent, performance. The performance of only a 
part of the copyrighted matter ma}- constitute an infringe- 
ment. When the unlawful performance is willful and for 
profit, the infringer is guilty of a misdemeanor, and may be 
imprisoned for not more than a year. 

Any person who prints or publishes any manuscript 
whatever, without the consent of the author or proprietor 
first obtained, is by statute liable to the author or pro- 
prietor for all damages therefor (see also p. 51). 

Suits for infringement are, like patent suits, usually 
brought in the United States Circuit Courts, and the pro- 
cedure is about the same (see p. 46) . A suit on the non- 
statutory right is, however, usually brought in the State 
courts (p. 52). Injunctions restraining infringement may 
be granted. Actions for forfeiture or penalty must be 
brought within two years of the infringement complained of. 

The assignment of a copyright should in all cases be in 
writing attested by two witnesses, and must be recorded in 
the office of the Librarian of Congress within sixty days, or 
it will be void as against any subsequent purchaser or 
mortgagee who paid a valuable consideration therefor 
and who had no notice of the prior transfer. 



56 



TRADE-MARKS. 

The purpose of a trade-mark is to denote the origin, as 
the maker or seller, or the ownership, of the article to 
which it is applied. The courts have for years protected 
trade-marks on the broad ground that he who by honest 
dealing has built up a reputation with the public for excel- 
lence of quality in his goods should be able to prevent 
another person from damaging his trade by deceiving the 
public into buying the goods of the same kind of the latter 
person when they supposed they were buying the goods of 
the former. It often happens that where the goods sold 
by a person have for years been designated by a particular 
mark, the public have become accustomed to distinguish 
those goods by the mark alone and to consider that goods 
of the same kind, bearing that mark, all came from the 
same person, and they would be deceived into taking the 
goods of another person if a similar mark was applied to 
them. The trade-mark protection is given by the law in 
order to prevent this unfair competition in trade. It is on 
this broad ground that courts will often restrain, or give 
damages against, a person who has apparently not copied 
the trade device of another, but has put up his merchandise 
in packages having a shape and coloring similar to those 
of the plaintiffs, so that the public would probably mistake 
the one for the other. 

Who may own a Trade-mark. — Under the non-statu- 
tory right a person who makes or selects articles of mer- 
chandise, and places them on the market, may adopt a 
trade-mark for such merchandise and be protected therein. 
Under the statutory registration of a trade-mark an 
11 owner " may be almost any one who makes, carries, sells 
or handles the merchandise. 

In What a Trade-mark Consists. — A valid trade-mark 
must be some arbitrarily selected designation. A device or 
symbol is the usual mark, but other means to denote origin 
or ownership may be selected. A word may be a trade- 
mark, but it must not be descriptive of the goods to which 
it is applied, as any person has the right to use any words 

57 



which properly describe his merchandise. The word " Star " 
applied to shirts, underwear, etc., has been upheld as a 
trade-mark, as it is not descriptive of the goods. The 
following have been held to be descriptive, and therefore 
not valid trade-marks: " Liquid" Glue, "Best" Tobacco, 
" Aromatic " Schiedam Schnapps, " Croup Tincture," " Iron 
Bitters," " American" Sardines, u Straight Cut" Cigar- 
ettes, " Durham" Tobacco, " Microbe Killer," for a vermin 
exterminator, " Lackawanna " Coal, and "St. Louis" 
Beer, the last two being mere geographical adjectives 
describing where the articles were produced. The word 
"Uneeda" applied to biscuits, and "Asepsin" applied 
to an antiseptic composition, have been upheld, and 
are good illustrations of valid trade-marks which might 
convey some meaning when applied to the article, but 
which are not, in fact, descriptive of the article. A single 
letter or a numeral may, usually, be a trade-mark. The 
mere name of the inventor or maker is usually not a good 
trade-mark, as another person of the same name might 
make the same article, but, in some cases of deliberate 
fraudulent imitation, a maker has been protected in the 
use of his name. A name written or printed in a peculiar 
way, such as a running signature, may be a valid trade- 
mark. A business sign may, in some cases, be protected as 
a quasi trade-mark. The size, shape, color, decoration of, 
and wording upon, the two packages, are often taken into 
consideration in ascertaining whether there has been an 
intent to imitate the appearance of the other goods, al- 
though the intent to infringe need not, in most cases, be 
proven. 

A trade-mark is not universal for all classes of manufac- 
tures ; for example, a person who manufactured axes and 
applied his trade-mark to them only could probably not 
prevent a baker from using the same mark on his bread 
alone. The trade-mark, to entitle the owner to the exclu- 
sive right to designate a class of manufacture thereby, 
must have been used by him on the articles in such class. 
A trade-mark need not in all cases be actually applied to 
the article. It may in most cases be on the packages con- 
taining it. The use of a word which sounds, but does not 
look, the same as another word used as a trade-mark, has 
several times been held to be illegal. Similarly the word 

58 



" Bouquet," applied to an article, has been held to be an in- 
fringement of a trade-mark consisting of the picture of a 
bouquet. 

The Non-Statutory Right.— The law within the United 
States affords substantial protection to owners of trade- 
marks independently of any statutory provisions. The 
statutes as to trade-marks do not " prevent, lessen, im- 
peach, or avoid any remedy at law or in equity which any 
party aggrieved by any wrongful use of any trade-mark 
might have had " if the statutes had not been passed. In 
actions under the non-statutory right, the exclusive owner- 
ship of the trade-mark must be proved by the plaintiff, 
and the suit must, usually, be in a State court, while the 
registration of a trade-mark, being prima facie proof of 
ownership, shifts the burden of proof onto the defendant, 
and suit may be brought in the United States courts. 

Under the Statutes. — Section 1 of the Trade-mark Act 
of 1881 provides that " owners of trade-marks used in com- 
merce with foreign nations, or with the Indian tribes, pro- 
vided such owners shall be domiciled in the United States 
or located in any foreign country or tribes which by treaty, 
convention or law affords similar privileges to citizens of 
the United States, may obtain registration of such trade- 
marks * * * ." Registration is not the grant of an 
exclusive right to the trade-mark, as in the case of the 
grant of a patent. In the case of a trade-mark the owner, 
by his non-statutory right, had the exclusive right to it 
before registration, perhaps years before, but the exclusive 
right to an invention is not conferred till the patent is 
granted. An examination for novelty is made by the 
Patent Office. Registration of a trade mark is, as hereto- 
fore stated, prima facie proof of ownership. An owner of 
a trade-mark which is used on articles sold only in the 
United States may, independent of statute, have protection 
of his right, but before he can register his trade-mark under 
the statutes, he must have actually used that trade-mark 
on the article in commerce with a foreign nation or 
with some Indian tribe. This provision is usually com- 
plied with, in case the owner has not so used the trade- 
mark in commerce, by sending one or more of the articles, 

69 



with the trade-mark thereon, to a foreign country. The 
United States has entered into treaties or relations with 
most of the principal countries of the world, so that citizens 
of the United States may obtain protection there and 
citizens of such foreign countries may register their trade- 
marks here. 

Registration. — In obtaining registry of a trade-mark 
there must be recorded in the Patent Office a statement 
specifying the name, domicile, location, and citizenship of 
the party applying, the class of merchandise and the 
particular description of goods comprised in such class to 
which the trade-mark has been appropriated, a description 
of the trade-mark, with facsimiles thereof, and a statement 
of the mode in which the same is applied and affixed to 
goods, and the length of time it has been used. The 
Government fee required is $25. A written declaration 
under oath by the person, or member of the firm, or officer 
of the corporation applying, must be filed, stating in effect 
that all the prerequisites of the statute have been complied 
with. This " declaration " must be carefully drawn, as the 
statute expressly states that the application " must, in 
order to create any right whatever in favor of the party 
filing it," be accompanied by a declaration setting forth in 
detail the matter specified. Interferences are conducted by 
substantially the same procedure as in the case of an inter- 
ference in an application for a patent (see p. 35). It has 
been held, however, that an appeal will not lie from the 
Commissioner in such a case to the Court of Appeals of the 
District of Columbia. 

Term. — The right under the registration remains in force 
for thirty years, except in cases where the trade-mark is 
claimed for, and applied to, articles not manufactured in 
this country, and in which it receives protection under the 
laws of a foreign country for a shorter period, in which 
case it expires at the same time as that in the foreign 
country. It can be renewed for another thirty years at any 
time during the six months prior to the expiration of the 
first thirty years. The public has not the right to use a 
registered trade-mark merely because the term has ex- 
pired, but the owner still retains his non-statutory rights 
(see p. 59). 

60 



Infringement and Suits. — Any person who reproduces, 
counterfeits, copies or colorably imitates any trade-mark 
registered under the act now in force, and affixes the same 
to merchandise of substantially the same descriptive prop- 
erties as those described in the registration, is liable in dam- 
ages to the owner of the trade-mark, ' ' for the wrongful use 
of said trade-mark," and the owner can also enjoin the 
wrongful use of his trade-mark when it has been used by the 
defendant in commerce with foreign nations or with Indian 
tribes, and can also recover compensation therefor. 

The judgment of an expert is not the test as to whether 
one trade-mark infringes another. If the ordinary pur- 
chaser, using ordinary care, and judging from the two 
marks, would mistake the one for the other and buy one 
article thinking he was buying the other, there is an infringe- 
ment. From the authoritative cases it seems that the pre- 
sent statute is to be narrowly construed, and in fact more 
than one court has cast doubts upon its constitutionality. 
The statutes apparently require, and, in a recent case, 
a United States Court of Appeals seemed to infer, that, 
to entitle a plaintiff to recover under this statute, a 
defendant must have used the trade-mark in commerce with 
a foreign nation or an Indian tribe. Whether this will be 
held hereafter to be a prerequisite or not, an owner of a 
trade-mark, registered or not, can obtain damages from, 
and can also restrain, a person who has wrongfully applied 
the trade-mark to merchandise of the same class and sold 
the same, either in the United States or in foreign com- 
merce. Registration of the trade-mark takes away no right 
which the owner would have if it were not registered, and 
prevents the necessity of proving ownership when suit is 
brought under the statutes of the United States. It is also 
important in the introduction of evidence in some cases. A 
trade-mark should, therefore, always be registered. The 
courts of the United States have jurisdiction of cases aris- 
ing under the statute. A person who fraudulently registers 
a trade-mark as his own is liable for any damages sustained 
thereby. 

The United States statutes do not make the infringe- 
ment of a trade-mark a crime, but some States have passed 
laws making it a criminal offence. It is a misdemeanor in 
New York. 

61 



Assignments. — The right to use a trade-mark on the 
same classes of goods may, in most cases, be assigned. In 
some instances, however, the trade-mark is purely per- 
sonal and cannot be transferred. The sale of a business 
and the good- will thereof usually passes the right to the 
trade-marks also. Each case depends on its own circum- 
stances. Assignments of registered trade-marks may be 
recorded in the Patent Office, but the statutes do not impose 
a forfeiture of any right by delay in recording. 

Articles made Abroad. — Section 11 of the Tariff Law of 
1897 provides in part "That no article of imported mer- 
chandise which shall copy or simulate the name or trade- 
mark of any domestic manufacture or manufacturer, or 
which shall bear a name or mark which is calculated to 
induce the public to believe that the article is manufactured 
in the United States, shall be admitted to entry at any 
custom house of the United States." A domestic owner of 
a trade-mark can have it recorded in the Treasury Depart, 
ment at Washington for the guidance of customs officials 
in reference to the above section. 

Section 8 of the same act provides in part "That all 
articles of foreign manufacture, such as are ordinarily 
marked, stamped, branded or labeled, and all packages 
containing such or other imported articles, shall, respec- 
tively, be plainly marked, stamped, branded or labeled in 
legible English words in a conspicuous place, so as to indi- 
cate the country of their origin, and the quantity ol their 
contents ; and, until so marked, stamped, branded or 
labeled, they shall not be delivered to the importer." The 
expression "quantity of their contents" has been interpreted 
by the Treasury Department to mean the number of articles 
contained in the package. 

LABELS AND PRINTS- 

A section of the act relating to copyrights provides that 
"in the construction of this act the words 'engraving,' 
4 cut/ and 'print' (seep. 52) shall be applied only to pic- 
torial illustrations or works connected with the fine arts, 
and no prints or labels designed to be used for any other 

62 



articles of manufacture shall be entered under the copy- 
right law, but maybe registered in the Patent Office." The 
Government fee is $6. No examination is now made as to 
novelty. Appeal may be taken to the Commissioner. The 
word "print" is construed by the Patent Office to be an 
"artistic representation or intellectual production" not 
borne by an article of manufacture or vendible commodity, 
but in some fashion pertaining thereto — such, for instance, 
as an advertisement thereof; and a label as "an artistic 
representation or intellectual production" impressed or 
stamped directly upon the articles of manufacture, or upon 
a slip or piece of paper or other material, to be attached 
in any manner to manufactured articles, or to bottles, 
boxes and packages containing them, to indicate the con- 
tents of the package, the name of the manufacturer, or the 
place of manufacture, the quality of goods, directions for 
use, etc. By "articles of manufacture" is meant all 
vendible commodities produced by hand, machinery or art. 

The certificate remains in force for twenty-eight years 
and can be extended for fourteen years more on application 
within six months before the expiration of the first term. 

A notice must be placed on the print or label, substan- 
tially as in the case of a copyright (see p. 54), for the 
registration is allowed under the copyright statutes. 

PATENT PROTECTION IN OUR COLONIES. 

An order of the War Department dated April 11, 1899, 
provides that " In territory subject to military government 
by the military forces of the United States, owners of 
patents, including design patents, which have been issued 
or which may hereafter be issued, and owners of trade- 
marks, prints and labels, duly registered in the United 
States Patent Office under the laws of the United States 
relating to the grant of patents and to the registration of 
trade-marks, prints and labels, shall receive the protection 
accorded them in the United States under said laws ; and 
an infringement of the rights secured by lawful issue of a 
patent, or by registration of a trade-mark, or label, shall 
subject the person or party guilty of such infringement to 
the liabilities created and imposed by the laws of the 

63 



United States relating to said matters : Provided, that a 
duly certified copy of the patent, or of the certificate of 
registration of the trade-mark, print or label, shall be filed 
in the office of the Governor-General of the island wherein 
such protection is desired ; and provided further, that the 
rights of property in patents and trade-marks secured in 
the islands of Cuba, Porto Rico and the Philippines, and 
other ceded territory, to persons under the Spanish laws, 
shall be respected in said territory, the same as if such laws 
were in full force and effect." 

The following order dated May 26, 1900, has also been 
issued : 

" 1. Notice is hereby given to all persons in legal pos- 
session of Letters Patent registered in Madrid, Spain, 
and extended to the island of Cuba to exhibit the dupli- 
cates of models, plans and specifications of their patents, 
or an authenticated copy of the same, together with a cer- 
tificate that they are in force in Spain, in accordance with 
Section 5 of the Royal Decree of May 14, 1880, within six 
months from the date of this order, in order to protect 
them from pending infringements. 

"2. American patents already forwarded for registra- 
tion, and those that may hereafter be forwarded, will at 
once be entered in the special register in the office of the 
Secretary of Agriculture, Commerce and Industries condi- 
tionally, reserving the decision in regard to the definite 
inscription or absolute rejection of such as are determined 
to be infringements in accordance with the proofs obtained 
within the period of six months, as provided in paragraph 
1 of this order, upon the expiration of which period the in- 
scription will be made in full, leaving to the parties con- 
cerned after that date the right of settling their differences 
before courts of justice." 

PRACTICAL SUGGESTIONS. 

Put your invention on paper at once — if possible, make 
complete drawings, and have them witnessed and dated 
(p. 8). Keep a witnessed and dated record of your ex- 
periments, whether successes or failures (p. 7). Don't 
think that because an invention is simple it is not valuable. 

64 



Don't disclose your invention to every one, even your 
friends. On the other hand, don't tell no-one, for your 
uncorroborated statement will probably not be sufficient 
proof of what was done (p. 36) . Don't delay in accom- 
plishing reduction to practice of the invention (p. 6). 
Make your application as soon as possible (pp. 21, 36). 

When you engage a workman, have it definitely under- 
stood whether any or all inventions are to be assigned to 
you, and, if so, have them so assigned when the application 
is executed (p. 42). Don't apply in your own name for a 
patent unless you are actually the inventor, nor, in case of 
a joint invention, unless you are a bona fide joint inventor. 
Let the actual inventor apply and have the application 
assigned to you (p. 9). Remember that he who originates 
the means for accomplishing the results is the inventor 
(p. 9). 

Don't lay out money in manufacturing an article until 
you know whether that article will infringe some other 
person's patent. A few dollars spent in an infringement 
search (p. 45) will probably save you money, time and 
trouble in the future. On the other hand, don't think that 
because an article is patented you cannot make it. A val- 
idity search (p. 46), may show that the patent is invalid, 
or vour counsel can often instruct you how to avoid it 
(p. 45). 

Don't buy any patent, nor any interest in one, without 
having a validity and title search (p. 43) made, at least 
the latter. The patent may be void, and therefore worth- 
less, or the title may be defective. The claims of a patent 
do not necessarily cover everything shown in the drawing. 

Don't be frightened if you receive a letter notifying you 
that you are infringing some patent. It is meant to 
frighten you, and may be a bluff. Don't answer it without 
consulting your patent attorney and submitting to him 
the article as manufactured by you. The wording of such 
an answer is often of great importance on the question of 
damages, if you are defeated in the suit. 

Don't decide legal questions without consulting com- 
petent counsel. 



65 



CHARGES. 

The writer has practically no fixed charges for either 
the prosecution of cases before the Patent Office or before 
the Courts. An " average fee" would probably be too 
great for a simple case and too small for a complicated 
one. Each case depends on its own circumstances, but 
what is aimed at is a reasonable charge for the time and 
labor involved. Prices upon any particular work will be 
gladly furnished at any time. 



FOREIGN PATENTS. 

r It will not be attempted, under this heading, to give in 
detail the laws or procedure in all the different countries. 
Only the principal countries will be selected, and only the 
fundamental rules in force in each will be mentioned. 

In nearly all foreign countries the invention must be 
new " within the realm" at the date of application, as 
public use or a description in a printed publication, at least 
in that county, will usually prevent the grant of a patent. 
The patent laws of some of the countries are modeled in 
part on those of the United States, notably Canada and 
Germany, and in such countries an examination for novelty 
is made. Many foreign powers, Great Britain for example, 
grant patents without such an examination, and allow 
practically any claims presented, even if broad enough to 
include matter old in the prior art. Such patents, there- 
fore, have not the presumption of validity which attaches to 
United States patents. In order to find out the "state of the 
art" (see p. 47), and to learn what are the probable limits 
of his rights, an application can, if desired, be filed in the 
United States and prosecuted to an " allowance" (p. 38) 
before the foreign patent is filed. The foreign applications, 
having so far as possible the claims allowed by the United 
States Patent Office, can then be filed within the six months 
before the final fee here must be paid (see p. 38) . The 
applications for the foreign patents can be filed at the same 
time as the domestic application, and, in most cases, 
should be so filed, in order to get as early a date of applica 
tion as possible in each country to avoid the bar of publica 

66 

LofC. 



tion or use in that country. In most foreign countries the 
application there must have been filed before the grant of 
the United States patent. The United States application 
should be filed, if not before, then within seven months 
after, the first application in any foreign country (see p. 21). 

In the majority of foreign countries taxes must be paid 
at stated periods, and the invention must also be " worked," 
that is practiced, in the foreign country, or the patent be- 
comes absolutely void. The theory of this is that if the pat- 
entee does nothing with his invention he practically aban- 
dons it, and the public is not benefited thereby and should 
3e entitled to use it. If it is a valuable invention, the pat- 
entee can afford to pay a yearly tax on it. The laws of the 
Jnited States do not require that a patent be " worked," 
nor that a tax be paid after the grant of the patent. It is 
a question whether it would not be a good plan to engraft 
such a provision on our patent system. 

Patentees do not wish to be troubled by having to keep 
track of the times for payment of taxes on, or the workings 
of, their foreign patents, with the danger that any mistake 
may result in the forfeiture of their patents. The writer has 
therefore arranged to notify clients, without charge, when- 
ever such taxes or workings fall due on patents taken out 
Dy him, usually about three months beforehand, in order 
that they may instruct him to attend to the matter. The 
patent can be legally " worked " for a small fee, depending 
on the particular invention. 

The writer has correspondents, practicing patent attor- 
neys, in the different countries, in whom he has confidence 
and who, by their past work, have proved their ability to 
transact any necessary patent business. These correspon- 
dents attend to the prosecution of the applications before 
the foreign patent offices, under instructions from the 
writer as to amendments. Canadian applications and 
amendments, like those in the United States, are made by 
the writer, and not through correspondents. 

Advice as to the laws in the countries mentioned here- 
after, or other countries, can be had from the writer. 

Canada, — Any person may obtain a patent who has 
invented any new and useful art, machine, manufacture or 
:omposition of matter, or any new and useful improve- 

67 



ment thereof, which was not known or used in Canada by 
any other person before the invention thereof and which 
has not been in public use or on sale in Canada, with the 
consent or allowance of the inventor, for more than one 
year before the application in Canada. A patent may be 
had if applied for within one year of the issue of a patent 
for the same invention in another country. A caveat may 
be filed, substantially as in this country (see p. 25). The 
Commissioner may object to the grant of a patent when 
the invention has been described in a book or other printed 
publication before the date of the application. Appeal 
may be had, and interferences (p. 35) may be declared. 

The term of a Canadian patent is either six, twelve or 
eighteen years at the option of the applicant. The fee for 
six years is $20 and can be extended to twelve years by 
payment of $20 additional before the end of the first six 
years. It may be extended to eighteen years by payment 
of a similar amount before the expiration of the twelfth 
year. If a foreign patent for the same invention exists, 
the Canadian patent will expire at the same time with the 
one having the shortest term. 

Reissues are granted on substantially the same grounds 
as in the case of United States patents (see p. 39). So 
also as to a disclaimer (p. 40). 

A patent, or any interest therein, may be assigned, and 
the assignment must be recorded, to be valid, before any 
subsequent assignment thereof is recorded. 

Damages for infringement, as well as injunctions, may 
be obtained by suit. 

The patent must be worked within two years of the 
date thereof, or the patent will become void. Yearly ex- 
tensions of this time can be obtained for a small fee. There 
are no taxes necessary to be paid, except the fees above 
mentioned. The patentee, or his legal representatives or 
assignee, cannot import the invention into Canada aftor 
one year from the grant thereof without forfeiting the in- 
terest of the party so importing. An extension for one 
year of this time for importation can be had for a small fee. 

Patented articles or the packages containing them must 
be marked " Patented' * with the year the patent was 
granted. 



68 



France. — Theoretically the inventor only should obtain 
the patent. It has been decided, however, that a person 
can dispose of his interest in an invention and the purchaser 
can then apply. If a purchaser is to apply, he should 
obtain and keep the written consent of the inventor. 

The term of the patent is 15 years, providing the taxes 
Cp. 67) are paid and the " working " (p. 67) accomplished. 
The Government requires a fee of 100 francs on application. 

A "patent of addition," for the unexpired term of the 
original patent, on an improvement on the invention 
covered by the original patent, may be obtained. Applica- 
tion must be made by owner of original patent. The 
Government fee is 100 francs. 

Application must be made in France before the invention 
has been disclosed by public use in France, or, usually, in a 
printed publication in France or elsewhere. Public use 
abroad will not be an anticipation. 

The taxes (p. 67) required are 100 francs yearly in ad- 
vance from date of application. No extension of time for 
payment can be obtained. No taxes are required on a 
patent of addition." No assignment will be recorded till 
all the taxes for the entire term of the patent have been 
paid. To avoid the necessity of paying these taxes it is 
usual to have the assignor execute a proper ' ' notarial 
power" which can be retained by the purchaser and en- 
ables him to have the assignment made and recorded at 
some later time, if necessary. 

The patent must be "worked" within two years of 
the grant, and the working must not cease for any two 
consecutive years. This can be attended to for a small fee 
depending on the particular invention. 

A citizen of the United States can import into France 
articles patented there by him without risk of forfeiture of 
his patent. 

Germany. — The patent may be granted to the first 
applicant, whether the inventor or not. If the applicant is 
not the inventor he should obtain and keep the written 
consent of the inventor to file the application, or the patent 
is liable to be declared void. 

If the invention has been disclosed in a printed publica- 
tion, either in Germany or abroad, within the last century, 

69 



or has been in sufficient public use in Germany before the 
date of application, no patent will be granted. Application 
should of course be made before the grant of a patent in any 
other country, and can be made at the same time with the 
application in the United States. A rigid examination for 
novelty is made. The grant of a German patent is very 
largely dependent upon the manner in which the invention 
is presented in the specification as first filed, and the speci- 
fication as filed in the United States is almost never 
sufficient. It must conform to the extremely technical re- 
quirements of the German Patent Office or the patent will 
be refused. Before the patent is granted it is open for 
opposition by other parties. This very seldom arises. 

The Government requires a fee of 30 marks for the grant 
of the patent. The term is 15 years from the day after 
filing the application, subject to the payment of the taxes 
(p. 67) and the proper working (p. 67) of the invention. 
A tax of 50 marks is payable before the expiration of the 
first year, 100 marks before the expiration of the second, 
and so on, increasing 50 marks each year. Two extensions 
of six weeks each for payment of a tax can be had for a 
small fee. 

The invention must be "worked" within three years 
of the grant of the patent or it will become void. 
What constitutes a sufficient working depends upon the 
particular invention. Importation of the patented articles 
into Germany is in some cases sufficient, in others the 
offering of licenses, and in some the invention must be 
manufactured there. The working can usually be attended 
to for a small fee. 

German patents have usually a broad scope, as the 
courts do not hesitate to construe it to cover the real in- 
vention no matter in what form it appears. A process 
patent is infringed by a product made by that process. 
Infringement is punished by fine or imprisonment, and the 
owner of the patent may also obtain damages therefor. 

An assignment, to be valid, must be recorded in the 
German Patent Office. 

A " Gebrauchmuster " or " model patent" is often of 
great value where the article is not of sufficient importance 
to take out a mechanical patent thereon, or where a patent 
has been refused. It is often likened to a design patent in 

70 



the United States, but the u Gebrauchmuster " is the 
broader. It is particularly useful in protecting tools and 
other small articles. The patent is granted without ex- 
amination. The Government fee is 15 marks. The term 
is three years, and a renewal for three years further can be 
had on payment of a fee of 60 marks. No other taxes are 
required. 

Great Britain. — The actual inventor may obtain the 
patent, or it may be obtained by an agent on "commun- 
ication " from the inventor or other party. If the inventor 
does not apply, the applicant should, before he applies, 
obtain from the former an assignment of the invention as 
to Great Britain, or a written consent to the application. 
A firm or corporation can apply for and obtain a patent by 
such "communication from abroad.' ' 

Publication or use of the invention in Great Britain be- 
fore the date of application there will prevent the grant of, 
or defeat, a patent. It must have been sufficient to com- 
municate the invention to the public so that it can make, 
construct and use the same. Publication or use in some 
other country is immaterial. In this connection it has 
been held that one of the British colonies which had a sep- 
arate government and patent system was a country foreign 
to Great Britain in the sense meant in the statute. When 
a person has applied in the United States for a patent, and 
within seven months of that date makes application in 
Great Britain, his patent will not be refused because of the 
publication or use of the device in Great Britain in the 
meantime. This is in consequence of a treaty. 

The patent is granted for fourteen years, usually from 
the date of application, subject to the payment of the pre- 
scribed taxes. No working (p. 67) is required. The patent 
covers England, Scotland, Ireland, Wales and the Isle of 
Man. 

The Government taxes (p. 67) are £5 before the end of 
the fourth year, and increase £1 a year thereafter. Exten- 
sions of time for payment can be obtained for one month 
for £1, two months for £3, and three months for £5. 

Assignments can be made and registered in the Patent 
Office for a small fee. They should always be so registered. 



71 



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